Orange County Trademark Attorney® Blog

February 2012 Archives

Electrolux Wins Trademark Infringement Lawsuit Against Chinese Imposters

February 21, 2012,

refrigerator.jpgOrange County - Swedish appliance-maker Aktiebolaget Electrolux has recently won a trademark infringement lawsuit against three Chinese companies and was awarded 121,000 yuan ($19,209) in damages.

According to the trademark infringement complaint filed last year, Electrolux claimed that the three Chinese companies had illegally produced and sold washing machines and refrigerators using a trademark of "ELEKES," which was quite similar to Electrolux' registered trademarks in China. Some of the infringing products were even reported to have used the Swedish flags and logos such as "High Tech from Sweden," which was clearly a deliberate effort to mislead consumers, according to the complaint.

"This has constituted illicit competition, which is against the Chinese law," stated trademark attorneys for the Stockholm, Sweden-based Electrolux.

Electrolux asked the three Chinese companies to stop infringing its trademarks and demanded compensation of 500,000 yuan. Electrolux also ordered one of the three defendants, Quindao ELEKES Electronic Appliance Co., to immediately change its name, which contained the exact same characters as Electrolux' Chinese brand name.

The Chinese court ruled that the pronunciation of "ELEKES" was very similar to the to the famous brand manufactured by Electrolux, which could be easily mistaken by consumers in the marketplace.

In its prosecution, Electrolux contended that it had established Electrolux China, a fully-owned subsidiary of the Swedish company, in the Chinese mainland in 1995. It also stated that since then it has worked hard to earn a favorable reputation with consumers through its high quality brand products and promotional campaigns.

Electrolux initially started out in the early twentieth century selling Lux-branded vacuum cleaners in several European countries. By 1925, the company had added refrigerators to its product line with other major appliances such as washing machines and dishwashers to follow in the years to come. Electrolux made its initial public offering on the London Stock Exchange in 1928 and another on the Stockholm Stock Exchange in 1930. In recent years, the company has become the world's second-largest home appliance manufacturer by share after Whirlpool.

Some of Electrolux' well-known appliance brands include, Eureka, Frigidaire, Gibson, Tappan, and Westinghouse, just to name a few.

Apple Trademark Dispute May Halt iPad Sales in China

February 10, 2012,

touchscreen.jpgOrange County - Apple's great expansion into China has been marred by a trademark infringement lawsuit brought about by Proview Technology over use of the name "iPad." Most recently, the Shenzhen subsidiary of the Hong-Kong-based company has filed for a permanent injunction to ban Apple from selling its iPads in China altogether.

The Chinese market, known for its rampant intellectual property infringement, is now shamelessly producing a clone to the iPad called iPed. Typically, this type of infringement from the Chinese companies would result in a trademark infringement lawsuit mounted by the U.S. company whose trademark is being infringed. Things have changed now, and unfortunately for Apple, it may potentially be blacklisted from China's growing consumer market.

With its economic landscape rapidly changing, and its middle and upper classes growing, China has created a huge fervor from foreign companies, eager to break into its market. For example, Embraer, a Brazilian private jet manufacturer, recently donated a $30 million private jet to Hong Kong actor Jackie Chan in exchange for his valuable endorsement.

In 2000, Proview Technologies, which provides LED lighting solutions, filed to trademark both the term "iPad" and "IPAD" in China, as its Taiwanese subsidiary had sold its trademark rights for $55,000 to the UK-based rights company, IP Application Development. In September 2010, Apple began selling the iPad tablet in China with the understanding that it had acquired the trademark rights to the "iPad" name from IP Application.

Proview filed its trademark infringement complaint the following year, seeking 240 million Yuan ($38 million USD) in damages from Apple's use of "iPad." Apple responded with a counterclaim, however it was dismissed by a Chinese court. According to the 2011 court ruling in favor of Proview Technologies, although Apple had purchased trademark rights to "iPad" from the UK company, the rights in the contract did not extend to its use in China.

Proview has also filed trademark infringement complaints in two other Chinese cities and is suing several retailers for selling the "iPad" tablet. Unlike high profile litigation in the United States which can go on for years, rulings in Chinese courts are often concluded in a matter of months. Near bankruptcy after its efforts to banish the Apple iPad from China, this verdict couldn't come at a better time for Proview.

Viaguara Energy Drink Trademark Denied For Being Too Similar to Viagra

February 1, 2012,

blue_pills.jpgOrange County - A European Union high court has ruled that a polish energy drink company cannot register for the Viaguara trademark because it is too similar to that of Viagra, an erectile dysfunction pill manufactured by Pfizer.

The decision from the European Union's General Court was that the similarity would allow Viaguara "to take unfair advantage of the distinctive character or repute of the trademark Viagra." An energy and alcoholic beverage company from Poland initially applied for the Viaguara trademark in 2005, but was rejected. After appealing to the high court, the trademark was rejected once again.

In addition to its ruling regarding the "unfair advantage" implications, the high court also based its ruling on the potential for medical implications if consumers were to be confused between the two trademarks. Pfizer's Viagra has been trademarked and distributed throughout Europe for years and is well-known to consumers worldwide.

"Even if the non-alcoholic drinks concerned do not actually have the same benefits as a drug to treat erectile dysfunction, the consumer will be inclined to buy them thinking that he will find similar qualities, such as an increase in libido," the court said in its ruling.

Headquartered in Warsaw, Viaguara manufacturers both the alcoholic and non-alcoholic energy drinks using the company's name. The alcoholic beverages are made with a plant, native to Brazil, called guarana. The fruit of the guarana plant reportedly contains twice the amount of caffeine as do coffee beans, which the Polish company claims to have stimulating and fortifying effects on the mind, body, and health. Over the past several years, many health experts have posted warnings about the overuse of guarana because of its high levels of caffeine.

The high court's ruling was welcomed news for Pfizer, which insisted that any similarity between the Viagra trademark and Viaguara energy drinks would be an attempt by the Polish company to benefit from a more established product's "power of attraction, its reputation and prestige, and to exploit, without paying any financial compensation, the marketing effort expended by Pfizer."

According to European Union rules, Viaguara has two months to appeal the decision to the Court of Justice on points of law only, which are the applications or interpretations of legal principles or statutes. Regardless of whether the Polish company appeals the high court's decision, it is not likely that it will ever be granted a trademark for Viaguara.

Since its introduction in 1998, Viagra has been prescribed to more than thirty-seven million men all over the world. Viagra's main competitors in the market for impotence drugs are Cialis, manufactured by Lilly Pharmaceuticals, and Levitra, made by Bayer Corporation in Germany and distributed by Glaxo Smith Kline.