Intellectual property infringement news and Case law from the GC

LULULEMON’S LEGAL DISPUTES 

The Canadian-based company Lululemon Athletica Inc. has been recently involved in two legal disputes. The athletic equipment manufacturer has been sued in the U.S. for patent infringement by Nike Inc., and for design and trade dress infringement by Peloton. 

Starting with the patent infringement, the well-known Nike company recently sued Lululemon before the Manhattan federal Court, for producing and selling without authorisation, their new device “Mirror Home Gym”, as well as for the related streaming workout classes and the mobile applications. 

From its side, Nike argued that the Canadian-based company infringed 6 of the patents they owned over the technology built-in in the mirror. This technology offers a variety of exercises, such as cardio, meditation or yoga, with different levels of exertion and allows users to store their performance. 

On the contrary, Lululemon declared that "the patents in question are overly broad and invalid”.

As mentioned before, the second legal dispute in which Lululemon is involved concerns Peloton, the fitness equipment manufacturer. In this case, it all started with Lululemon sending a cease-and-desist letter to Peloton, since they considered that Peloton was infringing their leggings and sports bras designs. 

During the time given to Peloton to answer the warning letter, the company filed a lawsuit before the Manhattan court, asking to declare that its bras and leggings were not infringing any intellectual property rights belonging to Lululemon. 

As a response, five days later, Lululemon sued Peloton for infringement in a Los Angeles court, alleging trade dress infringement, false designation of origin and unfair competition. 

A reminder to our readers that trade dress is a notion very specific to US law (at the crossroads of industrial designs, trade marks and competition law) and does not exist as such in EU IP law.

More updates to come, as soon as the verdict is available!

LEGO

LEGO has been sued for copyright infringement over a black leather jacket, containing individual artistic elements. The designer created this custom leather jacket for one of the characters of the Netflix series Queer Eye. 

The designer argues that LEGO reproduced his leather jacket in a character of its Queer Eye-themed collection, without his authorisation and without offering him a fair compensation. Moreover, he claims ownership over the jacket as an artistic work and reminds that the copyright over it is registered within the U.S. Copyright Office. 

In his lawsuit, the designer accused LEGO of having reproduced in their version of the jacket “the unique placement, coordination, and arrangement of the individual artistic elements” and consequently of copyright infringement.  

This legal dispute seems to be one of the most interesting cases of this beginning of year. 

MOTWI CASE

In 2018, the applicant filed an application for the registration of the EUTM “MOTWI”, before the EUIPO. It consisted of a figurative mark representing a motorbike and the word element “MOTWI”, for products included in class 12, such as electrically operated scooters, mopeds, motorcycles and non-motorized scooters. 

The company Bicicletas Monty S.A., raised an opposition against this EUTM registration, on the basis of the earlier Spanish national trade mark “Monty”, covering good in class 12 such as vehicles, apparatus for locomotion by air, by water and by land. The Spanish-based company claimed that the requested EUTM would provoke likelihood of confusion among the general public, which is one of the relative grounds for refusal stated in article 8.1.b) of the Regulation 2017/1001.

As requested by the EUIPO, the proof of use was correctly submitted by the opponent. Both the opposition division and at a later stage the Boards of Appeal admitted the opposition, which is the reason why “MOTWI”’s applicant decided to lodge an appeal before the General Court. 

The overall assessment of the likelihood of confusion showed that at a phonetical level, the comparison of the signs had a medium degree of similarity and the similarity degree of the designated products (under class 12) was low. 

Therefore, taking into account the previous considerations, the Court rejected the Boards’ decision on the grounds that the overall impression between both signs was not sufficient to assess likelihood of confusion for the relevant public. As a result, the MOTWI sign could be registered. 

This case shows us that assessing similarity (and thus the likelihood of confusion) is not always obvious!