Aug 18 A German court has ordered a subsidiary
of U.S. tobacco giant Lorillard Inc to stop selling the
popular blu e-cigarettes in that country, citing trademark
confusion with lighter and fuel products sold by Zippo
Pennsylvania-based Zippo, which announced the preliminary
injunction against Cygnet UK Trading on Monday, is also engaged
in a high-stakes trademark fight over the blu name in the United
States and several other countries.
"I am very pleased that the German court affirmed our legal
rights to our intellectual property," Zippo Chief Executive
Officer Gregory Booth said in a statement, adding that the
company was working "vigorously" to protect its trademarks
Robert Bannon, director of investor relations at Lorillard,
said the injunction will only impact online sales since the blu
e-cigs are not currently sold at retail stores in Germany.
In a statement, Lorillard said the company would defend
against "these types of opportunistic trolling tactics. Zippo
has shown it is willing to try to unfairly capitalize on the
commercial success of others when it has failed to prevail in
The Regional Court of Frankfurt am Main said in its Aug. 6
injunction that the blu e-cig brand created a "likelihood of
confusion" with Zippo's European Union "BLU" trademark on butane
lighters and fuel, according to Zippo.
Zippo has also filed to kill blu e-cigarette trademark
applications or cancel registrations in Canada and Mexico.
Sweden has already rejected a blu application by Lorillard,
The German decision comes as the two companies are going
head-to-head in federal court in California.
Lorillard U.S. subsidiary LOEC Inc, which makes the blu
e-cigarettes, sued Zippo last April seeking a court declaration
that its products do not infringe on Zippo's trademarks.
It took the action after Zippo filed its opposition to
several of Lorillard's applications for the blu name and design
with the U.S. Patent and Trademark Office, and threatened
litigation, according to court documents.
LOEC argued that there was "no likelihood of confusion,
mistake or deception" with Zippo's BLU lighters because the
products did not compete with each other and consumers were
sophisticated enough to know the difference.
Meanwhile, Zippo has filed counterclaims against LOEC,
seeking to prevent the sale of blu-brand e-cigarettes. A jury
trial is scheduled for April 2015.
Since Lorillard acquired blu in 2012, the brand has gained
47 percent of U.S. market share of e-cigarettes. Annual sales
have quadrupled to more than $200 million.
The blu e-cig business is being sold to Imperial Tobacco
Group as part of Lorillard's $27.4 billion merger with
Reynolds American Inc, which was announced last month.
(Reporting by Andrew Chung, editing by G Crosse and Ted Botha)