In the world of intellectual property (IP), trademarks are often seen as secondary in value to patents and know-how in a company’s intangible portfolio. However, in some industries brand recognition is paramount to success. Patent infringement often takes center stage in IP legal news, but trademarks see their fair share of litigation activity as well. Here’s a breakdown of some of the most noteworthy cases from the past year, as well as some ongoing cases to watch out for in 2018:
A New Balancing Act
New Balance won a $1.5 million payout in China’s Suzhou Intermediate People’s Court for the violation of its trademarked “N” logo by three Chinese shoemakers. This landmark win for the company came as a welcome surprise to consumer goods companies in the US and abroad, giving hope that China will continue to honor foreign company’s registered trademarks in a country rife with knockoffs and counterfeits.
Elsewhere in Asia, four related pharmaceuticals companies are being sued in the High Court of Singapore by the Sentosa Development Corporation for the use of the name “Sentosa” in relation to medical diagnostic instruments. Sentosa, an island owned by Singapore, is managed by the development company. They allege that the name is a proprietary piece of IP that promotes tourism to the island. Vela Holdings, Vela Operations Singapore, Vela Research Singapore, and Vela Diagnostics, which produce medical devices used to diagnose human diseases such as Zika and HIV, are being sought after for an unspecified amount of damages.
Not Such a Good Sport
Stateside, athletic wear brand Lululemon has filed a lawsuit in the Illinois Northern Court against alleged Chinese counterfeiters for the use of the company’s name in unauthorized website domain names selling counterfeit goods. The Canadian company was previously pursuing American sportswear giant Under Armour for trademark and patent infringement relating to sports bras, but the suit was dropped in October of 2017.
What’s Up Grumpy Cat?
The internet meme turned retailer Grumpy Cat was awarded a surprisingly large payout of $710,000 by the Central District of California Court for copyright and trademark infringement against the coffee company Grenade Beverage. Grumpy Cat alleged the company violated a license agreement between the two for the use of the aforementioned cat’s likeness on a single line of iced coffee products. Grenade Beverages continued to use the cat’s likeness for unauthorized products, as well as “cybersquatting” on the domain name www.grumpycat.com. The US court agreed that such use of the cat’s name and likeness constituted trademark infringement, resulting in Grumpy Cat being awarded almost three-quarters of a million dollars.
Unhappily Ever After
Wholesale giant Costco was ordered by the Southern District of New York Court to pay over $19 million dollars to high-end jeweler Tiffany & Co for the unauthorized use of the name “Tiffany” in connection with a line of solitaire diamond engagement rings. While Costco argued that the word “Tiffany” described a type of ring setting popularized by Tiffany & Co, the US Federal Court ruled that the rings were effective counterfeits being marketed deceptively as the jeweler’s products.
In Europe, designer shoemaker Christian Louboutin appealed to the European Court of Justice to prevent the Dutch company Van Haren from making red-soled shoes. Louboutins are iconic for their red soles, but EU trademark laws generally do not allow for a color and shape combination to be given protection. In February of this year, the court in fact found that such a trademark could be declared invalid, so the case has been sent back to the Dutch courts for a final decision.
A Little Less Conversation, a Little More Infringement
The estate of the rock-and-roll legend Elvis Presley recently lost a trademark infringement case in UK court against craft beer maker BrewDog over their IPA “Elvis Juice.” Last July, the UK Intellectual Property Office initially ruled that the beer’s name was a violation, but that decision was overturned in January of this year after BrewDog’s appeal. UKIPO decided that the use of the name “Elvis” was too ubiquitous for consumers to associate BrewDog’s beer with the Elvis Presley estate.
While the payouts for trademark violation are often less than those for patent infringement, some industries rely so heavily on marketing intangibles that it pays to be heavily litigious for continued success. From big-name retailers such as New Balance and Tiffany to small consumer goods producers like Grumpy Cat, trademarks are immensely valuable assets, sometimes the only intellectual property a company has. With already-robust court systems in the United States and Europe being joined by the previously-lax China and other up-and-coming foreign jurisdictions, litigation around trademark infringement will continue to generate momentum in the IP legal space.