Category: Intellectual Property

  • Imperial Sued Over Zone Trademark

    Imperial Sued Over Zone Trademark

    Photo: Olivier Le Moal

    2ONE Labs and Performance Plus Marketing have filed both a trademark infringement lawsuit and a preliminary injunction against Imperial Brand subsidiaries Zone nicotine pouch trademark.

    The suit alleges that Imperial’s Zone products willfully infringe the 2ONE nicotine pouch brand. In addition to seeking an award for damages, 2ONE is also seeking cancellation of Imperial’s Zone mark.

    According to the plaintiffs, the 2ONE brand has been continuously marketed and sold to adult consumers through thousands of U.S. convenience chain and independent grocery and smoke shop stores for the last five years.

    The suit alleges Imperial Brands made false statements by claiming a significantly earlier use of their mark in commerce than had occurred. The suit further alleges the false statements allowed Zone to be granted a fraudulent mark.

    “We have experienced numerous instances of consumer confusion since Imperial launched its Zone brand in 2024 and we intend to vigorously fight this type of blatant infringement, no matter how big the corporate bully,” said 2ONE Labs founder and partner Vincent Schuman in a statement.

    The case is before the U.S. District Court for the Central District of California.

  • Regulations Decimate Philippine Vape Sector

    Regulations Decimate Philippine Vape Sector

    Image: freshidea

    Onerous government regulations have forced about one-fifth of Philippine vaping companies out of business, according to Philippine E-Cigarette Industry Association President Joey Dulay. Importers, he added, have found it easier to comply than their domestic counterparts.

    “But we are pushing them to try and comply,” Dulay was quoted as saying by Business World.

    Under the Vaporized Nicotine and Non-Nicotine Products Regulation Act, manufacturers or importers must register their products and secure licenses to operate.

    They are also required to adhere to packaging standards and pay duties and taxes.

    Manufacturers, distributors and importers were given an 18-month transition period to comply with the regulations laid down in the vape law.

    Dulay noted that many vape brands and manufacturers have yet to secure their Philippine standard quality and/or safety mark and import commodity clearance sticker.

    By the end of August, the Bureau of Customs had confiscated PHP6.5 billion ($115.21 million) worth of illegal vape products, mostly from China.

    The government is estimated to miss around PHP5 billion yearly from illicit vape products.

  • ITC Judge Urges Njoy Ban

    ITC Judge Urges Njoy Ban

    Photo: JHVEPhoto

    An administrative law judge (AJL) of the International Trade Commission (ITC) has recommended a ban on importing Njoy Ace products into the United States following a patent-infringement claim filed by Juul Labs.

    Ace is the first pod-based vapor product and the only pod-based menthol vapor product authorized by the U.S. Food and Drug Administration as appropriate for the protection of public health. According to Njoy parent company Altria Group, an exclusion order banning the importation of Ace would severely limit FDA-authorized choices for adults and undermine public health.

    “Altria and NJOY respectfully disagree with the ALJ’s initial determination, and Njoy looks forward to presenting its position to the full ITC, which is expected to issue a final decision by December 23, 2024,” Altria Group wrote in a statement.

    In August 2023, Njoy filed a similar, independent patent infringement complaint against Juul with the ITC seeking a ban on the importation and sale of Juul products in the U.S. A hearing before the ALJ was held in June 2024, and an initial determination is expected in late September. A positive outcome in this case would not preclude an exclusion order against Njoy Ace from taking effect.

    “We continue to work to bring this issue to resolution,” Altria wrote in its statement. “The parties have engaged with a mediator to attempt to negotiate a resolution of these disputes. In addition, Njoy recently filed substantial equivalence (SE) exemption requests with the FDA to allow Njoy to market an already-developed Ace product with minor modifications that we believe avoid three of the four Juul patent claims at issue in the case.”

  • KT&G Sued

    KT&G Sued

    Photo: Ian O’Hanlon

    A former KT&G Corp researcher has filed a lawsuit against his former employer claiming that he was insufficiently compensated for inventing “the world’s first e-cigarette” while working at the firm, reports the Yonhap News Agency.

    Kwak Dae-geun demands KRW2.8 trillion ($2 billion), reportedly the highest amount ever claimed by an individual in a South Korean legal action

    According to the suit, Kwak joined the Korea Ginseng and Tobacco Research Institute in 1991 and began developing a tobacco-heating product in 2005.

     In July that year, he registered his first patent for a prototype. In December 2006, he registered another patent for an upgraded version with a controllable heater.

    Subsequently, he developed a full e-cigarette set, and registered a patent for part of the device in 2007 before leaving the company in 2010 as part of corporate restructuring.

    After Kwak’s departure, KT&G allegedly registered patents for some of his technologies without recognizing his contributions.

    In addition to his claim about compensation, Kwak contends that a prominent rival global tobacco firm was able to commercialize its internal heating-based e-cigarette model in South Korea in 2017 due to the absence of overseas patents.

    Kwak’s requested damages reflects his portion of the revenue KT&G is expected to generate through Kwak’s patented technology during the 20-year patent term, as well as what KT&G would have earned if it had registered patents overseas.

    KT&G counters that it has properly rewarded Kwan in the form of offering a technology advisory deal, and that Kwak had agreed not to raise any legal issues.

    The firm also said the technologies invented by Kwak are not currently used in the products it is selling.

    The e-cigarettes being sold by the global firm in question, meanwhile, did not involve technologies patented by Kwak, according to KT&G, which also noted that the rival firm had already commercialized early-model heated tobacco-type products in 1998.

  • U.S. Trade Commission to Probe ALD and Stiiizy

    U.S. Trade Commission to Probe ALD and Stiiizy

    Photo: New Africa

    The U.S. International Trade Commission (ITC) will investigate oil vaporizing devices, components and products manufactured and sold by ALD Group and Stiiizy in response to patent violation complaints filed by Pax Labs.

    Pax Lab has asked the ITC to issue a limited exclusion order and a cease and desist order.

    In a note on its website, the ITC stressed that is has not yet made any decision on the merits of Pax Lab’s complaint. The ITC’s chief administrative law judge will now assign the case to one of the ITC’s administrative law judges, who will schedule and hold an evidentiary hearing. That judge will make an initial determination as to whether there is a violation of section 337 of the Tariff Act; that initial determination is subject to review by the Commission.

    The ITC said it will make a final determination in the investigation at the earliest practicable time. Within 45 days after institution of the investigation, the ITC will set a target date for completing the investigation. ITC remedial orders in section 337 cases are effective when issued and become final 60 days after issuance unless disapproved for policy reasons by the U.S. Trade Representative within that 60-day period.

  • PMI and BAT Settle Patent Disputes

    PMI and BAT Settle Patent Disputes

    Photo: ASDF

    Philip Morris International and British American Tobacco have settled their ongoing intellectual property disputes relating to heated tobacco and vapor products.

    The cigarette makers had been fighting a multi-front patent battle. BAT, which makes Vuse vapes and Glo heated tobacco devices, was ordered to pay PMI millions of dollars after losing one case, while PMI has been blocked from importing its flagship heated tobacco device IQOS into the United States as part of another.

    The settlement includes non-monetary provisions between PMI and BAT that resolve all ongoing global patent infringement litigation, encompassing all related injunctions and exclusion orders, and prevents future claims against current heated tobacco and vapor products. The settlement also allows each party to innovate and introduce product iterations.

    “We are pleased that this matter has been resolved to the mutual satisfaction of both parties,” said PMI CEO Jacek Olczak in a statement. “There is a clear and growing global desire from adults who smoke to choose from a range of smoke-free products, and we believe continued reduced-risk category innovation can accelerate declines in the harms associated with smoking to the benefit of consumers and public health at large as we continue PMI’s journey to end the sale of cigarettes.”

    “This agreement is an important step forward for BAT and all our stakeholders,” said BAT CEO Tadeu Marroco in a statement. “Having already built two £1 billion [$1.28 billion] brands in Vuse and Glo, the potential for their continued impact on tobacco harm reduction is clear. I am delighted that this settlement will allow BAT to focus on developing innovative solutions that provide adult consumers with a greater choice of reduced risk products in support of our ‘A Better Tomorrow’ purpose. By doing so, we will help build a smokeless world for the benefit of consumers, investors and society as a whole.”

  • Pax Labs Sues ALD Over Patents

    Pax Labs Sues ALD Over Patents

    Photo: utah51

    Pax Labs has filed a lawsuit against the vape brand Stiiizy and its manufacturer ALD Group for allegedly infringing four vape pen patents, reports Bloomberg Law.

    Stiiizy and Hong Kong-based ALD make vaporizing devices, including a cartridge and battery, that utilize methods similar to Pax Labs’ patents, according to separate complaints filed in the U.S. District Court for the Central District of California.

    Pax Labs said the companies infringed U.S. Patents 11,369,756, 11,369,757, 11,766,527 and 11,759,580, which deal with methods for leak-resistant vaporizer cartridges and apparatuses.

  • Nicotine Among Fastest Growing Technologies

    Nicotine Among Fastest Growing Technologies

    Image: Olivier Le Moal

    Nicotine products featured in the IFI Claims Top 10 Fastest Growing Technologies—a ranking reflecting five-year growth rates of patent application classifications.

    Electronic smoking devices rose 35.8 percent over the past five years, and conventional cigarettes increased 23.2 percent during the same period. The growth rates put them in the same league as autonomous vehicles, which topped the ranking with a 38.3 percent growth rate.

    IFI Claims describes its index as “a window into which technologies are attracting R&D attention right now and which companies stand to benefit in the future from patent protection in those spaces.”

    According to the firm, patent activity provides valuable insight into companies’ R&D activity for researchers, analysts and investors. “Often, the true value of a company lies with its intellectual properties, so examining patent assets is a key tool in gauging the intangible assets of publicly traded companies,” the company wrote in press note.

    “It speaks to productivity, technological efficiency and IP strategy and frequently reveals technology trends and the competitive landscape within various industries.”

  • Nicotine a Top ‘Intangible’ Sector

    Nicotine a Top ‘Intangible’ Sector

    Photo: Smoore

    The tobacco and vaping business is the world’s most “intangible” sector in relative terms, according to the brand valuation consultancy Brand Finance.

    Intangible assets are identifiable, non-monetary assets without physical substance. They can be grouped into three broad categories—rights (including leases, agreements, contracts), relationships (including a trained workforce) and intellectual property (including brands, patents and copyrights).

    According to Brand Finance, intangible assets account for 91 percent of the tobacco and vaping sector’s total enterprise value—a condition that the consultancy attributes to tobacco and e-cigarette companies’ heavy investments in proprietary vaping-related technology and patented intellectual property. The China National Tobacco Corp., BAT and Philip Morris, for example, have each accumulated significant disclosed intangibles and goodwill due to large acquisitions.

    “While tobacco products are increasingly regulated in developed markets, e-cigarettes are at nascent stage and currently proving to generate high intangible value thanks in part due to lack of regulation of marketing these products in some jurisdictions,” Brand Finance writes in its report.

    Remarkably, the tobacco and vaping business was the second-largest contributor (after semiconductors) to the performance in the rankings of Japan, which saw the value of its intangible assets jump by $587 billion this year.

    “Our research aims to demonstrate the continued growing importance of intangible assets like strong brands and innovative technology in driving productivity and growth potential,” said Annie Brown, general manager at Brand Finance UK, in a statement. “Companies that strategically deploy their intangible assets have the ability to significantly outperform their competitors.”

  • Court Upholds IP Damages for Republic Tobacco

    Court Upholds IP Damages for Republic Tobacco

    The U.S. Court of Appeals for the Eleventh Circuit on Aug. 22 upheld a multimillion dollar verdict against Diamond Wholesale and its owner, Raj Solomon, for infringing trademarks owned by Top Tobacco, Republic Technologies and Republic Tobacco, reports IPWatchdog.

    In March 2022, a jury in the U.S. District Court of Georgia awarded Top Tobacco $11 million in damages against the wholesale company and its owner. Diamond Wholesale appealed the ruling, arguing that the district curt erred in excluding evidence, including witness testimony and invoices, that would have proven the retailer and its owner believed it was purchasing the counterfeit product from a legitimate seller, Star Importers, and that their infringement could therefore not have been intentional.

    However, the Eleventh Circuit ruled that a “showing of intent or bad faith is unnecessary to establish a violation.”

    Earlier this year, federal jurors in Atlanta awarded Republic Brands $2.3 million in statutory damages in a case about counterfeit tobacco rolling papers against Star Importers and ZCell & Novelties.