This year’s biggest vaping brand SKE is facing a legal battle over its use of the name ‘Crystal Bar’ across its suite of products.
The Chinese company is heading to the High Court to appeal a decision by the Intellectual Property Office that wholesaler Bargain Busting Limited can proceed to register the ‘Crystal Bar’ trademark it applied for in 2022.
Bargain Busting has also commenced its own case in the High Court for trademark infringement by SKE.
SKE opposed the initial application as soon as it was published, claiming Bargain Busting had been aware of its use of the name, and had filed it to “disrupt” its business. It claimed that applicant Tashmeen Kaur, proprietor of the wholesaler, had filed applications for several trademarks used by other vaping brands, and had done so “on an opportunistic basis”.
In newly published IPO dispute proceedings, the vaping giant argued it had ‘soft launched’ its Crystal Bar device “to selected retailers and reviewers” at a London vaping expo in December 2021, but could not convince the IPO officer overseeing the dispute that it “had an established trade with customers and goodwill in the UK” by that point.
Bargain Busting registered the mark just months later in May 2022.
“The UK trademark system is based on first to file,” the IPO said in its decision. “If a party wishes to show that it has antecedent rights, it must prove that it had goodwill in the UK in relation to the sign at the filing date of the applied-for mark. It is not enough for a party to show that its trade in the UK took off soon after that date, however rapidly.
“[SKE] has not shown that it had a protectable goodwill in the UK at the relevant date. Without that, its opposition fails.”
The Shenzhen-based vaping brand uses the Crystal name across its full suite of disposable, refillable pod and nicotine juice ranges. The brand rose to prominence on the strength of its Crystal Bar disposable device, which stands out in a homogenised category due to its transparent, jewel-like appearance.
“Its distinctive crystal shell not only ensures consistently sharp flavour but also serves as a fashionable and portable accessory,” the brand says in its marketing materials.
SKE had not responded to a request for comment at the time of publication.
Stephen Lowry, head of trademarks, copyright and designs at Brandsmiths, which is representing Bargain Busting in its legal action, told The Grocer that the IPO’s decision “underscores the critical importance of conducting thorough and professional clearance searches in relation to the goods and services of interest prior to filing and using in market”.
“Failing to undertake these searches can lead to significant legal and financial consequences, including potential infringement claims as well as potential rebranding. Such due diligence is essential, regardless of the size of the entity involved,” he added.
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