Hopes Shatter for European Trademark Protection for New Coke Bottle Design

A European General Court recently denied the Coca-Cola Company European Community trademark protection for the shape of its new bottle design.   European Community trademark protection provides trademark rights to the owner throughout all European Union member states.

The bottle design was determined by the court to lack distinction.  In fairness, protection of a shape in the EU is difficult to prove.  The shape must be shown to be recognizable by consumers by shape alone.  Coke failed to meet its burden of proof in this situation.

Here, Coke revamped its bottle design and made it less distinctive than previous designs, which were protected by EU Community trademark registration.  In an effort to modernize their product packaging, Coke may have drifted away from its recognizable bottle shape.

What’s the take away here?  For any company, protecting the shape of a product through trademark registration is a challenge.  The shape must be sufficiently distinctive to enable consumers to recognize the product over the competition.  If your organization is going to go down that route, be sure to create a sufficiently distinctive product that is recognizable by your customers over the competition. 

Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

3M Gets Stuck with Attorneys' Fees in Patent Case

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In Transweb LLC v. 3M Innovative Properties Company & 3M Company, the Federal Circuit Court of Appeals affirmed the district court’s finding that 3M was liable for antitrust violations in that 3M was found to have obtained its patent through inequitable conduct and subsequently sought to enforce the patent. As a result of 3Ms behavior in both acquiring and enforcing the patent, the appellate court awarded treble attorneys’ fees which came to about $26 million.

The patents at issue focus on filter material used in respirators for construction workers etc.  Transweb had developed a new filter material similar to the 3M subject patents. The Federal Circuit found the 3M patents were invalid based on evidence indicating that Transweb’s president distributed samples of their new filter material at a trade show more than a year before 3M filed patent applications covering their new filter material. The finding of inequitable conduct was confirmed because the evidence indicated 3M knew of Transweb’s prior distribution, and did not properly disclose it to the US Patent and Trademark Office as required.

The court then found that 3M’s enforcement of their patent against Transweb constituted an antitrust violation as an abuse of the legal process and awarded Transweb’s attorneys’ fees for defending against 3M’s lawsuit.  In justifying the award, the court stated that the attorneys fees were appropriate because they flowed directly from “3M’s unlawful act [of] bringing suit based on a patent known to be fraudulently obtained.” In awarding treble attorneys’ fees, the court indicated that the enhanced award was justified because the suit brought by 3M forced Transweb to either cease competition in the market or expend money to defend itself.

What’s the take away here?  When preparing and prosecuting a patent application, ensure that your organization meets all requirements with regarding to disclosure to the US Patent Office.  This requires diligence and educating all involved in the process.  Sometimes that can include sales, marketing, and business development personnel as well as R&D and manufacturing. 

Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

If You're Going to be a Super Hero, Create Your Own Logo

If you want to be a superhero, you’re going to have to create your own logo.  In a recent California court case, DC Comics v. Mad Engine, Inc., the court refused to dismiss an action brought by DC Comics against Mad Engine for trademark infringement.  Mad Engine was selling t-shirts with a “dad” logo in red and yellow on a blue shirt.  The logo was a five-sided shield similar is style to the Superman “S” that appears in DC Comics books and movies. 

Mad Engine asked the court to dismiss the lawsuit on the basis that the “dad” logo was a parody of the Superman logo.  The court rejected the argument and the case now moves on to trial.

What’s the take away here?  Even if you think your mark is a parody of another mark.  The owner of the other mark may not share your sense of humor.  Think twice before proceeding with a mark like that. 

Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

As an aside, I’ll be speaking on Thursday, February 18th at the NC Bar Association Business Law Section Annual Meeting on a panel discussion of IP issues in Pinehurst NC.  Anyone thinking of attending, I hope you do as it is shaping up to be an interesting program.  I’ll also be there on behalf of NCLEAP (North Carolina Lawyer Entrepreneur’s Assistance Program) recruiting new volunteers.  If you’re there, please come and say “hello”.