Response to "The Feud of ELFBAR' Trade Mark": CAFC Reverses Preliminary Injunction Ruling in VPR Brands Case

According to a report by IPWatchdog on August 15th, the United States Court of Appeals for the Federal Circuit (CAFC) today reversed and remanded the district court's decision to grant a preliminary injunction to VPR Brands, LP for reexamination.

The case began with VPR Brands, LP accusing Shenzhen Waiboli Technology Co., Ltd of infringing on its "ELF" trademark used for e-cigarettes and related products.

Previously, VPR filed a lawsuit against the company Wyvole in the Southern District Federal Court of Florida, alleging that the e-cigarettes distributed by the company under the ELFBAR brand constitute trademark infringement and could cause confusion in the market. The next day, VPR submitted a preliminary injunction application to the court against ELFBAR products.

In response, VPR Corporation countered that, according to the "unlawful use doctrine," VPR's "ELF" trademark is invalid, and VPR will not be successful in its claims of infringement.

According to this principle, the use of trademarks in commerce must be legal. Whaboli Corporation claims that VPR did not obtain pre-market authorization from the US FDA before selling its "new tobacco products," making its use illegal, rendering the trademark registration invalid and unenforceable.

The district court ultimately granted the preliminary injunction, rejecting Wybori Corporation's argument to apply the "fair use doctrine" in the infringement case.

Although the court acknowledged that Viboryl Corporation provided evidence of illegal use under the Food, Drug, and Cosmetic Act (FDCA), the court "refused to analyze Viboryl's evidence to determine if it was sufficient to prove illegal use", and explained that doing so "would require drawing inferences and speculation from the existing record", which is the responsibility of the FDA.

Vibhore subsequently appealed to the Federal Circuit Court of Appeals.

In its appeal, the CAFC stated that...

The district court misunderstood the guidance of the Eleventh Circuit Court of Appeals and unreasonably denied WeiBoli Company's defense of unauthorized use without thorough legal or factual analysis.

The CAFC declined to make a ruling on the evidentiary issue in the first instance, but stated that the grant of preliminary injunction was "not warranted" because the district court erred in interpreting the application of the Eleventh Circuit's principles for illegal use.

The Court of Appeals for the Federal Circuit (CAFC) has explicitly stated that...

Our ruling does not pre-determine whether the district court must adopt the principle of illegal use, or its application in this case.

Our ruling does not prejudge whether VPR's defense of illegal use can be established in the preliminary injunction or subsequent stages in this case. The district court should reconsider all related issues in light of this ruling and reassess VPR's preliminary injunction request.

Therefore, the CAFC has revoked the granting of the preliminary injunction and remanded all relevant issues for further review, including all factors that may have been involved in the granting of the preliminary injunction.

According to Tianyancha, Shenzhen Weipoli Technology Co., Ltd. was established in 2014 with Zhang Shengwei as its legal representative. It is a wholly-owned subsidiary of Heaven Gifts Technology Co., Ltd. The company's business scope includes research and sales of electronic atomizers and their key components, consulting services for electronic atomizers, as well as research and sales of batteries and electronic products.

According to Yahoo Finance, VPR Brands, LP operates in the e-cigarette, electronic cigar, personal vaporizer, and pocket lighter industry in the United States. The company, formerly known as Soleil Capital LP, changed its name to VPR Brands, LP in September 2015. VPR Brands, LP was founded in 2003 and is headquartered in Florida.