E-Cigarettes: A “Juicy” Case of Trademark Infringement

Chinese pharmacist, Hon Lik, introduced the modern-day e-cigarette in 2004. The battery powered devices are designed to simulate the effects of smoking by heating a liquid containing nicotine into vapour, which is subsequently inhaled by the user. The liquids contain various levels of nicotine and are offered in a variety of flavours.

The use of e-cigarettes in North America has grown exponentially, resulting in a growing concern among regulators and politicians that e-cigarette marketing materials target the youth demographic. This has prompted governments to seek ways to limit the appeal of vaping to youths. In particular, there is concern that increased use by youths is due in large part to the wide variety of flavoured juices. The Food and Drug Administration (FDA) recently warned five major e-cigarette manufacturers that, if they do not address youth use of their products in the next 60 days, the agency may prohibit them from selling flavoured juices.

In addition to the public health concern, there is a growing concern regarding trademark infringement. Common categories of juice include sweets, food, drinks and tobacco flavoured products. The products within these categories are often associated with brand names, such as Snickers, Skittles or Nutella. The companies who market these products often do not have the right to use the brand names, nor have they licensed the recipes and trademarks.

For example, the chewing gum and candy company WM Wrigley Jr Co filed a lawsuit against Get Wrecked Juices LLC for trading off its Starburst and Skittles brands. Specifically, the complaint accused the company of infringing its trademarks by selling “Pink Starburst” and “Skeetlez” juices. The company also used photos of a pink Starburst candy, a rainbow and candy-coated lentils to illustrate the flavours. A federal judge found that the company violated federal trademark laws and ordered them to cease selling all products containing the branding and deliver the products to Wrigley for destruction. The company was also ordered to cover Wrigley’s court costs.

While legal action is increasing in this sector, to date, companies producing products for e-cigarettes have seemingly been able to market them with infringing names without notable repercussions. As more brand owners take action, the illegitimate use of brand names will likely decline.

Author: Steve Inglis