NJOY is one of the most easily recognized electronic cigarette brands. You can find NJOY products in all 50 states in over 80,000 retail locations. They even have products in retail stores in the United Kingdom, France, Spain, Italy, Portugal, and the Netherlands.
One of the most recognizable aspects of NJOY products is the package design. The e-cigs come in a flip-top box similar to a zippo lighter and until recently, they were the only brand to use this particular design. Then Victory electronic cigarettes released a similar package and NJOY executives claim that the competitor is infringing on their trade rights. As a result, NJOY has announced a lawsuit against Victory for patent and trade dress infringement.
NJOY alleges that Victory is essentially copying their package designs, but do they have a legal case that will stand in court? They might. In the formal document, NJOY claims that Victory “unfairly attempted to gain an advantage in the electronic cigarette market by infringing NJOY’s rights and attempting to trade off NJOY’s reputation for high quality electronic cigarettes.”
The complaint mostly revolves around the packaging. In the lawsuit, NJOY states, “Rather than develop their own technology and branding identity, defendants (Victory) have blatantly copied NJOY’s lighting technology in their disposable electronic cigarette, thereby infringing the ‘959 Patent and the NJOY Case in their product case thereby infringing NJOY’s trade dress rights.”
NJOY received their official patent on September 24, 2013 and they claim the case is the “source identifier” for their products. Victory Electronic Cigarettes has not issued a formal statement, but CEO and chairman Brent Willis did briefly mention the lawsuit during the recent Wells Fargo E-Cig Forum in New York City. “It’s something I can’t talk about as a company,” he said. Then he went on to dismiss the allegations saying, “Personally, I think it’s a little reckless.”
While the zippo-style appearance of the NJOY package has given the brand a decent bit of brand recognition, it is really a minor aspect of the company. While Victory’s packaging does mirror the overall design, it is really questionable whether a lawsuit is worth it. Apparently, NJOY executives believe it is a big deal and they are willing to pursue it in court.
With the electronic cigarette industry booming and new companies appearing each day, this kind of ruthless competition is likely to continue. Companies will inevitably struggle to create totally unique designs in such a saturated market so more of these arguments and lawsuits will likely follow in the future.
Do you think NJOY did the right thing by suing Victory for patent infringement? What do you expect the legal outcome to be in this lawsuit?