WVS NEWS: Elf Bar maker wins appeal to challenge US sales ban in ongoing trademark dispute

Written by Antonia Di Lorenzo || Ecigintelligence.com

In a significant legal development, the US Court of Appeals for the Federal Circuit has ruled that Shenzhen Weiboli Technology, the maker of the popular Elf Bar vape, can challenge a court-imposed order banning the company from selling its products under the “Elf” trademark in the US. The company had been sued by VPR Brands, a Florida-based company that claims to have rights to the “Elf” brand for vaping products in the US.

The ruling highlighted that the district judge had “misread” legal precedent and based the injunction on a “deficient” analysis of trademark infringement claims.

The Federal Circuit pointed out that the lower court failed to apply the correct legal standards when assessing the likelihood of confusion between the Elf Bar and Elf trademarks. The court’s decision emphasised the need for a more rigorous evaluation of the trademark dispute.

“Our decision does not predetermine whether the district court must adopt the unlawful-use doctrine or the scope of its application as pertinent here,” the court stated. “Nor does our decision predetermine whether Weiboli’s unlawful-use defence survives at the preliminary injunction or a later stage. The district court is entrusted, consistent with this decision, to reconsider all pertinent issues and reevaluate VPR’s motion for a preliminary injunction.”

As a result, the Federal Circuit vacated the district court’s grant of a preliminary injunction based on VPR’s trademark infringement claim. The case was remanded to the district court to reconsider Weiboli’s unlawful-use defence and reassess VPR’s motion for a preliminary injunction.

Too late to avoid rebrand

The legal battle dates back to 23rd February 2023, when a US federal judge issued a preliminary injunction against Shenzhen Weiboli Technology, ordering the company to stop marketing its Elf Bar e-cigarettes in the US. This ruling stemmed from a lawsuit filed by VPR Brands, who argued that Shenzhen Weiboli’s Elf Bar products infringed on its trademark, causing consumer confusion and harming its market position.

The district court initially sided with VPR Brands, finding that the company would likely succeed in its trademark infringement claims. Consequently, Shenzhen Weiboli was forced to halt US sales of its Elf Bar vapes. It rebranded its products as EBDesign to comply with the court order while continuing to serve its customers.

“The case will be heading back to the District Court for further proceedings, but after 18 months, Plaintiff already has won, as far as I am concerned,” said Marc Hankin, founder of Hankin Patent Law and an experienced patent attorney.

He noted that this decision is unlikely to lead to a surge in cases using the “unlawful-use defence”, as most trademark attorneys do not apply it for US cases.

“What is unfortunate, in this case – for the defendant at least – is that the district court decision on the preliminary injunction was in February 2023,” Hankin said. “Preliminary injunctions are considered ’emergency relief’, yet the appellate court took 18 months to overturn the district court decision. By that time, Weiboli had already stopped using the accused trademark and changed the name of their product.” He added: “They are, in my opinion, unlikely to switch their name back, but I suppose that is always a possibility.”

The Federal Circuit’s decision marks a pivotal moment in the ongoing legal dispute between VPR Brands and Shenzhen Weiboli Technology. As the case returns to the district court, it remains to be seen how the reconsideration of the unlawful-use defence and the reassessment of the preliminary injunction will impact the future of Elf Bar in the US market.

– Antonia Di Lorenzo ECigIntelligence staff