Follow-up to the ELFBAR Trademark Dispute: US Court of Appeals Rescinds ELF Trademark Infringement Ruling

Follow-up to the "ELFBAR Trademark" Dispute: US Court of Appeals Rescinds "ELF" Trademark Infringement Ruling

The United States Court of Appeals for the Federal Circuit vacated VPR Brands' preliminary injunction against Shenzhen Weiboli Technology Co., Ltd. (a wholly owned subsidiary of Aiqiqi Technology Co., Ltd.), requiring the district court to re-examine all relevant issues in the trademark infringement case. Weiboli previously refuted VPR's trademark validity with the "illegal use principle."

 

According to Ipwatchdog on August 15, the United States Court of Appeals for the Federal Circuit (CAFC) today vacated and remanded for retrial the district court's ruling on the preliminary injunction granted to VPR Brands, LP.

 

The case began when VPR Brands, LP accused Shenzhen Weiboli Technology Co., Ltd. of infringing its "ELF" trademark for e-cigarettes and related products.

 

Previously, VPR sued Weiboli in the Federal District Court for the Southern District of Florida, claiming that the ELFBAR brand e-cigarettes distributed by the company constituted trademark infringement and were likely to cause confusion in the market. The next day, VPR submitted an application for a preliminary injunction against ELFBAR products to the court.

 

In response, Vibrio countered that VPR's "ELF" trademark was invalid under the "unlawful use doctrine" and that VPR would not prevail in its infringement claim.

 

Under this doctrine, the use of a trademark in commerce must be lawful. Vibrio claimed that VPR's failure to obtain premarket authorization from the U.S. Food and Drug Administration (FDA) before selling its "novel tobacco products" made its use illegal, rendering the trademark registration invalid and unenforceable.

 

The district court ultimately granted a preliminary injunction, rejecting Vibrio's argument that the "unlawful use doctrine" applies in infringement cases.

Although the court acknowledged that Vibrio provided relevant evidence to prove unlawful use under the Food, Drug, and Cosmetic Act (FDCA), the court "refused to analyze Vibrio's evidence to determine whether it was sufficient to prove unlawful use," explaining that doing so "requires inference and speculation from the existing record," which should be handled by the FDA.

 

Vibrio then appealed to the Court of Appeals for the Federal Circuit.

 

On appeal, the CAFC stated,

 

"The district court misunderstood the Eleventh Circuit's guidance and unreasonably rejected VPR's unlawful use defense without adequate legal or factual analysis."

 

The CAFC declined to make an evidentiary ruling at first instance, but stated that the grant of the preliminary injunction "cannot stand" because the district court erred in interpreting the Eleventh Circuit's application of the unlawful use doctrine.

 

The CAFC specifically stated,

 

"Our decision does not prejudge whether the district court must adopt the unlawful use doctrine or the extent to which it applies in this case."

"Our decision also does not prejudge whether VPR's unlawful use defense will survive in this case at the preliminary injunction or at a later stage. The district court should reconsider all relevant issues in light of this decision and reevaluate VPR's preliminary injunction application."

 

Accordingly, the CAFC vacated the grant of the preliminary injunction and remanded for reconsideration of all relevant issues, including all factors that may implicate the preliminary injunction.

Shenzhen Weiboli Technology Co., Ltd. Corporate Information | Source: Tianyancha

 

According to Tianyancha, Shenzhen Weiboli Technology Co., Ltd. was established in 2014. The legal representative of the company is Zhang Shengwei. It is a wholly-owned subsidiary of Aiqiqi Technology Co., Ltd. Its business scope covers the research and development and sales of electronic vaporizers and their key components, consulting services for electronic vaporizers, and the research and development and sales of batteries and electronic products.

 

According to Yahoo Finance, VPR Brands, LP operates in the electronic cigarette, electronic cigar, personal vaporizer and pocket lighter industries in the United States. The company was formerly known as Soleil Capital LP and was renamed VPR Brands, LP in September 2015. VPR Brands, LP was established in 2003 and is headquartered in Florida.