ELFBAR Seeks Injunction Against U.S. Firm for Alleged CounterfeitingArvin Peh
Chinese e-cigarette maker iMiracle petitions for U.S. injunction against VPR Brands for alleged counterfeiting.
According to LAW360, renowned Chinese disposable e-cigarette brand ELFBAR’s manufacturer, iMiracle, applied to a federal judge in Georgia, USA, seeking to ban American firm VPR Brands LP from selling its “low-quality”, “counterfeit” e-cigarettes.
In its motion for a preliminary injunction against VPR Brands, iMiracle argued that for years, VPR Brands witnessed ELFBAR become one of the “most successful brands” in the country, but instead of attempting fair competition, VPR used “fraudulent” trademark registration to hinder iMiracle, rolling out its own “counterfeit products.”
The company stated:
“Although VPR and its licensors just started selling their counterfeit products, it is clear from their branding as the ‘original ElfBar’ that VPR is capitalizing on iMiracle’s good reputation and word-of-mouth.”
VPR Brands initially brought a lawsuit in October 2022, claiming iMiracle and other companies infringed on the rights of the Elf name as the company held registration with the U.S. Patent and Trademark Office. It relied on its registration to convince U.S. District Judge Aileen M. Cannon to issue a preliminary injunction against iMiracle and other companies in February 2023, banning them from selling e-cigarettes with the Elf name.
Following this, VPR Brands launched its own disposable e-cigarette line—Elfbar BP5000 and Elf VPR 7000. iMiracle alleges these products wholly mimic iMiracle’s ELFBAR e-cigarettes, even including the same flavors, shape, and color scheme.
iMiracle asserts that VPR Brands’ immediate launch of disposable e-cigarettes after being banned from using the Elfbar name was a clear attempt to confuse consumers and exploit the good relations iMiracle had established with customers. iMiracle is seeking to prohibit VPR Brands from selling products under the Elfbar name. They also requested the preliminary injunction bond be set at zero, pointing out VPR Brands cannot claim to have lost normal profits.
It is noteworthy that when Judge Cannon issued the injunction against iMiracle, she set the bond at $500,000, despite these companies claiming they would lose tens of millions of dollars due to the injunction.
In June 2023, iMiracle counter-sued, and another Chinese company, GD Sigelei, also claimed it first launched and sold the “Elf Tank” “sub-brand” in April 2016. Therefore, it has common law rights to the “Elf” name. These companies contend VPR Brands’ “Elf” trademark is invalid.
Moreover, VPR’s “Elf” trademark was “copied” during its interaction with another Chinese company, Clean Vapor Technology, in 2017. This company is a third-party manufacturer, not a litigant, and it is still a supplier to VPR, but they allege that VPR did not obtain the rights to use the name from the company.
VPR Brands has filed a motion to dismiss the Georgia counterclaim, stating it should not be compelled to deal with third-party counterclaims brought by foreign entities, asserting the first-to-file rule necessitates these suits to be heard in Florida.