IP Protection: More than Meets the Eye
by Eran Soroker & Robert Dorneanu
From Gucci to Ray Ban, sunglasses brands are a big deal. Each year, companies spend millions of dollars creating brand presence and protecting their IP. Brand protection is usually associated with products or services. For example, Apple’s trademarks appear on iPhones and iPads and Google’s trademarks are displayed on their search engine, email services etc. Brand protection does not stop there and there is more than meets the eye. The story of the successful Israeli fashion eyewear brand Carolina Lemke, famous for its marketing campaign led by Kim Kardashian West and Bar Refaeli, is a good example.
Carolina Lemke, a dear client of our firm, is a successful Israeli-based eyewear and sunglasses company with over 70 global branches and kiosks. Established in 2011, Carolina Lemke revolutionized the eyewear market in Israel. Sunglasses have never been easier to purchase. No more tedious visits to optometrists, or overpriced products. Purchasing eyewear have become fun and spontaneous. Anyone could casually pick up a cool pair or two of fashionable sunglasses on the way to the beach and never look back. Carolina Lemke’s vast investment on creating a cool effortless image paid off and has led to Carolina Lemke becoming a household name and a leading brand in Israel.
A significant element of Carolina Lemke’s revolution was a unique kiosk design that surfaced in dozens of malls across Israel. The kiosk portrays an elegant and futuristic combination of an ancient Aztec pyramid and a luxury passenger cruise ship. The stylish eyewear products are aligned on the pyramids’ steps enabling consumers instant, easy and quick access to each eyewear product. The special lighting integrated into the kiosk’s white shelves, allow for each pair of sunglasses displayed, to look their best. At the same time, the design enables Carolina Lemke’s employees to make direct eye contact with consumers and offer assistance in the purchase experience. Thanks to Carolina Lemke’s enormous investment and efforts in the design of the kiosk, it has become a well-known trademark and is solely identified with Carolina Lemke.
Carolina Lemke’s success has not been limited to Israel. It operates several branches all over the world, including in the famous, La Rambla boulevard, in the touristic, bubbly heart of Barcelona.
During November 2018, it was brought to Carolina Lemke’s attention that a competing sunglasses retailer operates a confusingly similar kiosk in Barcelona. The infringing kiosk did not bear the name or logo of Carolina Lemke, only the generic name ‘Gallery Milano’.
Carolina Lemke was faced with a challenging question: what can be done against this infringer? If the infringement is not stopped, Carolina Lemke’s brand could incur irreversible damages and its vast investments and efforts could be lost.
Carolina Lemke was well prepared for such a scenario. Based on our legal advice, Carolina Lemke has acted in advance to protect its IP rights in the unique kiosk design in Europe. The kiosk was registered both as a 3D trademark (EU trademark number 015765126) and as a design (CTM registered design number 003851112-0001).
To better understand the protection offered by both a 3D trademark and a Design, let’s go legal:
Generally, trademarks are registered for words or logos. Protecting the kiosk by registering a 3D trademark is a creative legal solution. Protecting the association between an object and its source, in our case, the kiosk and Carolina Lemke. Once registered, others may not use this kiosk or any other kiosk that may cause likelihood of confusion.
A design is used to protect the owner’s rights in the appearance of a product or part of a product, including outline, color, shape and decoration. In our case, the registration of the design grants Carolina Lemke a monopoly over this kiosk and enables it to prevent others from copying the kiosk without its consent.
A design differs from a 3D trademark in several aspects. For example, a design must be novel for it to be registered. Prior publications of the design may cause its revocation. Further, the term of protection of a design is different than that of a trademark.
Based on these registrations, Carolina Lemke had solid legal grounds to act against the infringers. The copycat kiosk was an infringement of Carolina Lemke registered 3D trademark as well as of its registered European design. The case required swift action. Our firm picked the right local Spanish IP attorney for the mission and jointly decided it was time to strike.
A Cease and Desist letter was sent but the initial results were not satisfactory. Although grand promises were made, only minor changes to the infringing kiosk shape were implemented. Civil proceedings followed and Carolina Lemke filed for a temporary injunction to immediately stop the use of the infringing kiosk and simultaneously filed a lawsuit seeking a permanent injunction.
These legal proceedings were primarily based on the IP rights that Carolina Lemke had registered. The Court granted a temporary injunction, but the defendants did not surrender easily. They filed an appeal re the temporary injunction and a counter claim, trying to tire out and intimidate Carolina Lemke with the risk of lengthy and expensive proceedings. The defendant’s strategy did not bear fruit. After a favorable decision rejecting the appeal re the temporary injunction, a Contempt of Court proceeding was initiated and a pretrial was held in Alicante, Spain. The scales tipped to Carolina Lemke’s side. Negotiations were held and ultimately a settlement was reached. The defendants changed the design of their kiosk, undertook not to infringe upon Carolina Lemke’s IP rights in the future and covered Carolina Lemke’s legal expenses.
The most prominent lessons we can learn from this unique case are: (1) do not give in, or be intimidated by infringers. (2) IP protection, management and enforcement should be taken seriously. (3) Planning your IP protection in advance can make all the difference in the world to your brand.
IP professionals may offer a set of tools and solutions to safeguard and promote your commercial interests. The business position in the market may be dependent on solid IP rights.