January 2013

January 22, 2013, by Mandour & Associates, APC

Los Angeles -L’Oreal USA Inc., licensee of Polo Ralph Lauren Holdings Inc.’s trademark for use on fragrances, told the Second Circuit Friday that the U.S. Polo Association’s link to the sport of polo does not give it license to infringe Ralph Lauren’s famous trademarks.

During the oral arguments in Manhattan, counsel for L’Oreal said that the U.S. Polo Association should not be allowed to use its connection with the sport of polo as an excuse for infringing the famous horse-and-rider logo.

The U.S. Polo Association instigated the dispute when it filed a declaratory judgment lawsuit against Ralph Lauren in November 2009, asking the court to rule that it can use its logo on men’s fragrances.  Judge Robert W. Sweet ruled against the declaratory judgment in May 2011.

The fragrance-branding dispute is just another battle in a long history of legal clashes between the two entities.  U.S. Polo Association and Ralph Lauren have been litigating trademark infringement issues since 1984.

In 2003 the two companies were able to come to a partial settlement in which the U.S. Polo Association obtained the right to sell clothes with its logo which features two men on horses superimposed on each other.  However, a lower court found the U.S. Polo Association branching into fragrances, a business Ralph Laruen has been in since the 1970s, infringed on Ralph Lauren’s trademarks and it entered an injunction prohibiting the association from selling fragrances with its logo.

L’Oreal argued that the U.S. Polo Association has been trying to encroach upon the Ralph Lauren trademarks for years and asked the Second Circuit to uphold the lower court’s ruling.

L’Oreal accused the U.S. Polo Association of attempting to “ride the coattails of one of the most famous companies on earth” and argued that it should not be allowed to profit from the time and effort Ralph Lauren has put into growing its brand to what it is today.

The U.S. Polo Association argued that issuing an injunction prohibiting it from entering the fragrance business is overbroad.  It argued that perfumes and clothes are related categories that are often marketed together in ad campaigns and placed near each other in stores.  If the association is allowed to sell clothes, it argued it should also be allowed to sell fragrances.

January 7, 2013, by Mandour & Associates, APC

Los Angeles – Apple is expected to make an offer on the IPHONE trademark in Brazil which is currently owned by IGB Eletrônica SA.  IGB Eletrônica SA released an Android-powered smartphone called the IPHONE Neo One under the company’s Gradiente brand this month.

Gradiente said that it will take all measures available to it to protect its intellectual property rights, as it does not believe the two brands can coexist in the same market.

Gradiente applied for the trademark in 2000, two years after Apple launched the iMac, but six years before Apple announced the launch of the iPhone at Macworld San Francisco.

Gradiente was granted the right to use the trademark on its smartphones in Brazil in 2008.  Brazil’s trademark office said that Gradiente requested the right to the trademark before Apple and therefore it has exclusive rights to the brand until 2018.

Despite being granted the right to use the trademark in 2008, Gradiente did not start using the trademark on smartphones until last week.  The company claims its focus had been on a corporate restructuring process, which it wrapped up earlier this year.

Gradiente said it registered the trademark because it expected “there would be a technological revolution in the world of smartphones with the convergence of voice and data transmission and reception via mobile Internet.”

The company, however, has not kept up with the technological revolution.  The phone’s appearance is similar to Apple’s iPhone, but it runs on the outdated 2.3 version of Android’s operating system.  The phone features a 3.7-inch touch screen, Bluetooth, Wi-Fi, 3G and a camera.

Gradiente said it currently does not plan to sell or license the rights to the brand, but it is likely that Gradiente and Apple will come to some agreement that will allow Apple to use the trademark, as Apple will not want to stop selling the iPhone in Brazil.

This is not the first time Apple has had international competition for its trademarks.  Due to a loophole in its contract, Apple was unable to procure rights to the iPad brand in China from Proview Technology before it launched the iPad.  Apple ended up paying Proview $60 million for the trademark.

The trademark in Brazil is not expected to bring that much money in, as the market is significantly smaller in Brazil than it is in China.  However, the company will likely still pay a substantial amount of money for the trademark, thanks to the popularity of the iPhone name.