Category Archives: trade mark infringement

Microsoft forced to rebrand following BskyB’s trademark triumph

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RegisteredTrademark_jpgMicrosoft has renamed its cloud storage service SkyDrive to OneDrive following a trademark infringement dispute with BSkyB, as discussed previously on our Azrights blog.

The broadcaster first issued a complaint to the EU’s trademark office in June 2011, insisting Microsoft’s use of the word “sky” infringed its copyright.

Microsoft released SkyDrive, formerly known as Windows Live Folders and Windows Live SkyDrive, in 2007. The service has since acquired in excess of 250 million users.

While BskyB ceased its own cloud storage service at the end of 2011, it said Microsoft’s product was misleading for users of its continuing digital services, such as Sky Broadband and Sky Go.

Microsoft argued it was difficult to mistake its own cloud-based services with BskyB’s satellite, mobile and online services. However, a UK High Court ruling last summer held Microsoft would need to rename its product.

In arriving at the decision, the judge noted that customers experiencing problems with Microsoft’s SkyDrive had often called BskyB’s helpline, mistakenly believing it was responsible for providing the service.

Microsoft initially threatened to appeal the decision, but later backed down after the companies reached a settlement permitting the US computer giant a “reasonable period of time to allow for an orderly transition to a new brand,” as reported by Computer Weekly.

The rebrand has now taken place, but for Microsoft this case is all too reminiscent of its earlier dispute with Gernany’s Metro AG, which pushed the company to rename its Windows 8 Metro interface shortly after establishing itself as a household name.  Microsoft also risked losing the right to trademark Windows due its delay in trademarking the name.  Clearly, the company needs to make some changes to its practices.

Trademarks are important assets which add significant value to a brand. The lesson to take away from this case is the importance of checking that you can use a name before you launch a new product. It is so much easier to find a new name at that stage if your preferred one is problematic.

Then once a name has been identified as available, secure trademark registration in your main market straight away. It is not necessarily commercial at that stage to register in all other countries worldwide. However, if the product is successful, it’s important to have a strategy in place for registering in other markets over time to sustain the value of your brand identity. This is all too apparent following the recent European Trademark Office’s ruling that Pinterest doesn’t own rights to its name.

UGG Trademark Disputes

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Trademarks are territorial, which means you register them country by country wherever you do business. Although this is can be expensive, and it may be tempting when starting out, to think it’s easy enough, in theory, to trade in other countries under a different brand, UGG is an example of what can happen when a trademark is not available to a business internationally.

TMRBoots known as UGGS are worn around the world particularly in rural locations. The term UGG for this specific type of sheepskin boot has been used in Australia since the 1950’s and now many consumers believe the boots are from Australia.

The term UGG-BOOT was registered in 1971 in Australia, but then lapsed as it was not used. Then in 1999 the American outdoor company Deckers registered the word mark UGG AUSTRALIA. Celebrities began to wear the boots and by the early 2000’s the boot became popular and sought after all over the world. As a result Deckers became more protective of the brand and began issuing legal threats against companies in Australia who were using terms similar to UGG such as UGH.

In 2006 a competitor of Deckers, UGG-N-RUGS successfully applied to remove UG, UGG and UGH Boots from the Australian Trademarks register on the grounds that the term was generic and descriptive of a specific type of sheepskin boot in Australia.

Deckers still has its trademarks in the EU and the US However, in Australia the company  aroused much controversy over the question whether the name is a brand name or a geographical indicator for a type of boot., and as mentioned Deckers lost its trademark there.  The fact that Deckers is still a registered trademark outside Australia means that competitors cannot market their boots as UGGs in the EU and USA. Instead they have to use terms like Australian Sheepskin boots to describe the boots.

Competitors are trying to change UGG into more of a regional mark like Champagne and want consumers to associate UGGs with a particular type of sheepskin boot made in Australia and not a trademark which indicates they are made by Deckers. In response, Deckers is focusing on the fact that its UGG boots are made in China and not Australia.

The fact that the UGG trademark has been revoked in Australia but is still registered in the EU and the US presents Deckers with serious challenges.

It is difficult for Deckers to tackle the companies selling UGG boots from Australia on the internet as I found out when I tried to buy a pair of UGG boots for my daughter back in 2009. As I wrote on the Azrights IP Brands blog that’s when I became aware that UGG is not a trademark in Australia and Deckers can’t stop vendors from Australia labelling their boots as UGGs within Australia. It is notoriously difficult to prevent sales online from entering the EU or American markets once to reach  consumers in these markets. This is despite the fact that many of them are likely to have bought the boots online believing them to be the genuine article, and not from some Australian boot company producing a lower quality boot.

Arguably, Deckers could do more to prevent consumers from being confused. For example, they could rebrand so as to remove the word Australia, especially given that its UGG boots are in fact made in China. It would be even better if the company were to change its brand to DECKERS UGG.

Deckers would benefit from taking swift action to prevent confusion in the market place, and to ensure the name UGGs is associated with its own quality products. The importance of educating the public about its boots so people are not duped into buying UGG boots from Australia when what they’re actually looking for are branded UGG Australia boots from Deckers can’t be overstated. What do you think? Have you had any experiences buying UGG boots? Let us know by leaving a comment below.

Protecting the Shire: Fry and McKellen step in to save the Hobbit

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Some may see it as unwarranted bullying, while others say it is to be expected.  Either way, the publicity arising from recent allegations of IP infringement have certainly thrown The Hobbit pub in Southampton firmly into the limelight.  The Saul Zaentz Company, owners of rights to the Hobbit and Lord of the Rings brands, among other JTT Tolkien work, have taken action against small business owners in the past, such as in November of last year where their lawyers argued that the Hungry Hobbit cafe took unfair advantage of the Hobbit trade mark.

While the cafe is reportedly considering a change of name, the pub, which sells Frodo and Gandalf cocktails, has received overwhelming support not only from the online commuity, but from actors involved in the upcoming Hobbit film. A Facebook campaign has rallied the support of 60,000 Facebook users (Save the Hobbit, Southampton), and actors Stephen Fry and Sir Ian McKellen have even agreed to pay licence fees on behalf of the pub to settle the dispute.

When issues like this capture the imagination of the public, the results can be surprising, I’m sure that SZC were not expecting such a backlash.  More so than any marketing or education by businesses in the field, these disputes serve to increase public awareness of IP issues crucial to businesses worldwide.  Taking advantage of the public interest, a group of Tolkien enthusiasts have now also begun a campaign against exclusive rights in the word Shire, encouraging visitors to their website to proudly showcase a Save the Shire poster.  It will be interesting to see how much momentum they are able to generate.

Hasbro Trade Mark Infringement Claim Stops Launch

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Alleged infringement of the TRANSFORMERS trade mark recently sparked a dispute between the leading computer technology company Asus and Hasbro, a multinational games business.

Hasbro is the maker of a line of toy alien robots named Transformers, able to disguise themselves as automobiles. The Transformers universe features two warring factions of these robots: the Autobots and the Decepticons. First introduced in 1984 the robots have, in the course of nearly thirty years, spawned comic books, animated TV series and a live-action movie franchise.

Filing suit for trade mark infringement, Hasbro alleges that Asus’ release of the Transformer Prime laptop takes advantage of the trade mark in order to make money, a representative stating that ‘Hasbro continues to aggressively protect its brands and products and the specific actions we are taking today against Asus underscores yet again Hasbro’s willingness to pursue companies who misappropriate our intellectual property for their own financial gain.’

So, why is a toy company concerned about a consumer electronics business using the word TRANSFORMERS?  After all, there seems to have been no quarrel between Hasbro and Boots over registration of TRANSFORMERS for cosmetics. How likely are consumers to be confused into linking Asus to the Autobots?  Tablet devices and toys do seem quite far removed from each other.  However, the combination of TRANSFORMER and PRIME does offer some support to Hasbro’s case as discussed below.

Asus has used the word TRANSFORMER when naming its products in the past, releasing the Eee Pad Transformer tablet device at the beginning of January. However, this time round the addition of the word ‘Prime’ has given rise to suspicion, as the leader of one of the robot factions is a character called ‘Optimus Prime’. Hasbro is not sure that this is just a coincidence.

Included in Hasbro’s trade mark portfolio are registrations and applications for the trade mark TRANSFORMERS PRIME in various jurisdictions.  While not yet registered in the US, Hasbro does own UK and European registrations for these words, originally filed in June 2010.  TRANSFORMERS PRIME is clearly a much closer match than just TRANSFORMERS, but is not registered against tablet devices.  It remains to be seen whether the notoriety of the TRANSFORMERS brand will tip the case in Hasbro’s favour despite differences in the goods sold under the mark.

Techweek draws a parallel between the tablet and the robots, noting that ‘the major selling point of the Asus Transformer Prime is that it converts [transforms?] into a form that closely resembles a laptop when the keyboard dock is used’, so mimicking the Transformers’ ability to disguise themselves as vehicles.  Still, the word ‘transformer’ is somewhat descriptive in this context, arguably referencing the functionality of the product rather than ripping off the robot franchise.  Dailytech further observes that ‘The Transformer Prime doesn’t convert into a truck, and the Transformer toys don’t offer the Android operating system with apps and Web-browsing capabilities.’

Asus claims that internal studies have shown ‘no issues’ with its use of the Transformer brand indicating an intention to stick with the name, but if Hasbro has its way it could be some time before the tablet reaches consumers.

Bands and Brands: (Some of) The original cast of Bucks Fizz strike out

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Recently, Robert Gubby (aka Bobby G) succeeded both in an opposition brought against his former band members in connection with their application to register the trade mark mark THE ORIGINAL BUCKS FIZZ, and in defending an action for revocation of the mark BUCKS FIZZ, owned by his wife Heidi Manton.  The case report is available via the IPO Bucks Fizz to consist of the original lineup.  Further clarifying the Registry’s view, the Hearing Office explained:

‘Plainly, once the public became aware that most or all the original members of the group were once again performing under tha namen Bucks Fizz, the public’s expectations as to the line-up of any particular group appearing under that name was liable to change.  But the recent confusion is not the result of the use made of the mark by its owner … [who] cannot be held responsible for that because … such use was not with [their] consent’

This is not the first dispute arising in connection with ownership of an act’s name after members of the band have left.  The IPOs decision cites the SAXON case, in which Laddie J. explained that ownership of a band name vests in the band partnership, and that individual band members, though they have an interest in the name and associated goodwill, do not own the assets themselves.  Importantly, the judge found that a second band using the same name, established following the disbanding of the first, will acquire separate rights in the goodwill it generates.  The question was then whether or not the goodwill of the initial band has evaporated; whether its rights have been abandoned; or whether it has acquiesced to the second band’s activities – in that case, and as suggested in the BUCKS FIZZ case, the original band members were found to have abandoned their share in the goodwill, leaving the latest incarnation of the band with stronger rights.

Under dissimilar circumstances, the SUGABABES brand, after the last of the original band members left last year, has recently been the subject of a dispute.  Mutya Buena, one of the founding members, filed an application for the European Community Trade Mark in March 2009, on the assumption that after the last of the founding members of the band left, the Sugababes had effectively ‘ended’.  This was opposed on the basis of earlier rights owned by the latest incarnation of the band, whose Heidi Range argued: “Our record company [Universal] owns the name so there’s no conversations about who owns the name”.  The band currently includes 3 members, none of whom were involved in the original line-up, and in light of the strength of goodwill in the brand associated with the group the opposition was successful.  Buena’s application was stripped of much of its content, resulting in a narrow, arguably near-worthless registration for: Paper, cardboard and goods made from these materials, not included in other classes; stationery; paper gift wrap and paper gift wrapping ribbons.

The words of Laddie J. in SAXON are a concise warning, and of continuing relevance to bands and other businesses whose brands are liable to become valuable assets alike:

A properly advised band could avoid the problem that [a change in membership] might cause by entering into a partnership agreement which expressly provides for the partnership to continue on the departure of one or more members and which expressly confirms the rights of the continuing and expressly limits the rights of departing partners to make use of the partnership name and goodwill.

Microsoft En-Trench-ed In Trade Mark Tussle

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Trenched, a video game developed by Double Fine and produced by Microsoft, has had its European release date set back, potentially indefinitely, following a dispute over the name.

The European Community Trademark TRENCH, filed in 2009 by the board game designer Rui Alipio Monteiro, is registered against both board games and computer games. The designer also invested in registration of a number of designs, protecting aesthetic aspects of the board game.

Perhaps as a result of poor due diligence, Trenched the video game was announced in March, and released by Microsoft and Double Fine on the Xbox Live Arcade in North America on June 22, without cooperation from Monteiro who now appears set to fight Microsoft for exclusive use of the brand.

Speaking about the dispute to Eurogamer, the Portuguese company Criações a Solo explained that they intend to “defend all their author’s copyright and intellectual property against any infringements”, and stated their goal as “putting Trench in the international Hall of Fame of both classic electronic and board games”.

Double Fine’s Trenched not only shares elements of its name with Monteiro’s board game – they are both military-themed, and set in or around the time of WW1. Double Fine designer Brad Muir told Destructoid ‘This entire process has been very frustrating to us and it makes us sad that the people of Europe can’t play our game. Microsoft owns the IP for Trenched and they are working to resolve things as quickly as possible’.

Mark Methenitis at Joystiq offers some explanation of complications with the position in the US – namely that both the application for the logo shown here on the left, and Microsoft’s application for the mark TRENCHED, have so far been filed as intentions to use. This means that it might be some time before either are granted, however, should Monteiro’s application succeed, his rights will extend back to June 2010, nearly a year before Microsoft filed their own applicatio. In that case, an important question will be whether Microsoft’s use of the word mark TRENCHED could be confused with the Trench logo.

Some cite their investment in marketing as motivation for sticking to their guns, and it will be interesting to see whether Microsoft and Double Fine can come to some arrangement for coexistence with the board game designer or whether they will dispute the scope of their rights.

Alternatively, it is possible that media attention (such as this blog post) generated by the dispute might create enough buzz to offset the loss of investment in marketing should Microsoft persuade Double Fine to re-brand.

In the meantime, Microsoft’s line is:

‘We don’t have an update on the distribution of Trenched in Europe yet… We’re working to resolve the matter as soon as possible and will keep you posted’

Irrespective of the eventual outcome, this dispute is another very public example highlighting the importance of early clearance of brand names; and in particular international trade mark searching when products or services will be sold abroad.

GOOGLE PLUS – Brand Naming Strategy

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Google’s launch of its social networking site, Google Plus, has caused a lot of attention and speculation in the media.  However, it is not just the site itself that has provoked discussion, but its name too.

Google’s decision to create its social media site under the Google brand has been criticized and praised in equal measure.      

Unlike Google, Apple is a company that has launched its products and services under new names, for example, recently using a lowercase letter ‘i’ to distinguish a service as belonging to it.

Whilst this strategy has been successful in some cases, in others Apple’s use of common words such as ‘phone’ or ‘book’ in combination with ‘i’ has caused it to face lawsuits for trademark infringement as mentioned in our previous blog, Apple under fire again-this time over ibook.

Although Apple has generally managed to fight or pay its way into keeping its chosen brand names, what is for sure is that Google by using its pre-existing trademark for its other services, will be unlikely to attract costly lawsuits over trademark infringement.

Google’s brand strategy

It is not just with Google Plus that Google has used this lower cost more straightforward approach to its new names.  It has launched other products under the GOOGLE brand name such as Google News, Google Translate, and Google Chrome.

As well as this, alongside the introduction of Google Plus, two of its existing services are also getting a rebrand. The names for Google’s longstanding products Picasa and Blogger are going to be retired.  Picasa will become ‘Google Photos’ while Blogger will become ‘Google Blogs’.

Brand unification

Ben Parr of Mashable states that this ‘brand unification effort will be the largest in the company’s history’. By bringing more of Google’s products under one brand name, this will help to strengthen and solidify the Google brand. Over the past few years Google has managed to be a consistently highly rated brand, meaning that any new products will benefit from using the company’s name.

However, despite the fact that Google’s strategy of launching its social networking site under the existing brand name has some upsides, its decision has come under scrutiny, mainly because some think that the name ‘Google’ is associated with a search engine rather than a Social Network, so that when they hear the name Google, ‘social’ does not enter their heads.  Therefore,  some have criticized Google for not launching its social media site under a different brand name

Brand extension

Is it really going to strengthen Google’s brand to extend the original brand name to other areas? Or is the power of a brand in its ability to pinpoint a specific service to one name? Whereas before, the word ‘Google’ was synonymous with its search engine service, extending this meaning to cover social networking as well could weaken or strengthen the power of this brand.

Rather than trying to launch a new service, separate from its search engine one, what Google is trying to do is to make Google more ‘’people centric”. Vic Gondotra, the leader of Google’s social efforts, statedWe’re transforming Google itself into a social destination at a level and scale that we’ve never attempted — orders of magnitude more investment, in terms of people, than any previous project”. Rather than trying to provide just a social media service, Google itself wants to become more social.

So when branding products, it seems Google’s approach is one that might eliminate lawsuits over trademark infringement, and also help to strengthen the brand as a whole. As the web becomes more social, and Google is in danger of being taken over and replaced by sites such as Facebook, Google’s decision to rebrand itself as ‘social’, bringing the company name into this brand, will help it to redefine itself in accordance to the changing nature of web usage.


One problem Google has been facing is the increasing tendency for people to use its name as a verb.  In recent times people have talked about ‘goggling’ or ‘facebooking’. While it may be flattering for a brand to gain such recognition this could be disastrous for its trade mark rights.

Take for example ASPIRIN.  It used to be a trademarked name for a pain reliever medicine made of acetylsalicylic acid which was made by only one company.  Now it is synonymous with that type of pain killer and made by many companies.

Many other once famous marks are now only generic words and no longer trademarks including CATERPILLER, HOOVER, THERMOS and WALKMAN while XEROX and KLEENEX have gone dangerously close to losing their marks.

When a mark is generic it means the trade mark is synonymous with all versions of that product.

There are steps you can take to prevent this from happening. One way to reduce risk is to use generic descriptors to clearly differentiate the trade mark and the product.  That is, Xerox copier or Kleenex tissues, and to ensure everyone else does likewise.

If a mark becomes generic it is almost impossible for the mark to be registered again. It will be deemed to lack distinctiveness and then everyone will be able to use it.

By choosing to stick with its existing brand name, for Google Plus is Google helping or hindering itself?  Will Google’s decision to use its name with brand extension descriptors put it in a better or worse position to avoid genericity?   What do you think? I hope to hear readers’ thoughts.

Apple under fire again – this time over iBook

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Apple’s ongoing trademark battles seem set to continue, with a new suit filed in connection with their iBooks service hot on the heels of a dispute with iCloud Communications (reported online last week).

This time Apple is being sued by a New York book publisher, John T Colby for trademark infringement of the name ‘iBooks’.  The lawsuit was filed less than a week after the iCloud claim.

John T Colby bought the rights to a series of books which have been published under the iBooks imprint for over a decade, and believes that Apple’s use of the term iBooks for its eBook store and reader app is clear trademark infringement.

Colby bought in 2006 and 2007 the assets of various entities owned by New York publisher Byron Preiss, who had published more than 1,000 hardcover and paperback books under the “ibooks” name starting in September 1999, according to the lawsuit, which was filed in U.S. District Court in Manhattan today.’

Apple has been using the term ‘iBook’ for their line of laptops sold between 1999 to 2006 and have already registered the mark (International Registration Number 874453) against computers, computer hardware, computer peripherals and users manuals sold therewith. It was only when Apple decided to use the term for electronic books, something not explicitly covered by their trademark, that Colby took action. In 2010 Apple started using the term ‘iBooks’ and Colby wants to preserve the existing goodwill in the ‘iBooks’ name, as distinct from ‘iBook’ in this case.     

However, Colby fears that Apple’s trademark will have negative repercussions for the iBooks imprint. The complaint is reminiscent of the troubles envisaged by iCloud, and reads ‘Apple’s use of the mark ‘iBooks’ to denote the electronic library that can be accessed via its iPad tablet computer and its iPhone is likely to overwhelm the good will of plaintiffs ‘ibooks’ and ipicturebooks’ marks and render them virtually worthless’. 

Due to their legal resources, and on occasion some technicalities, Apple have so far managed to fight or settle the majority of trademark disputes brought against them.  In this case, the fact that Colby does not own a trade mark for the brand will make their case more difficult.  Apple last year secured ownership of a separate IBOOKS trademark, previously in the hands of an Isle of Man corporation, which covers software used to support electronic books, and also filed for a far more comprehensive IBOOKS mark (US serial number 85008412). However the new application comes long after Colby’s use of the brand, and the first commercial use of the earlier registration is recorded in 2000, also after the iBooks imprint was used.

Colby seeks injunctive relief and monetary damages (which have so far been unspecified). Both Apple and Colby have so far not commented on the lawsuit.  In light of Apple’s success in holding onto the iPad and iPhone brands against tech giants Cisco and Fujitsu, and their considerable marketing efforts, it is hard to imagine their letting go of the brand.  It will be interesting to see how far Colby is willing to go to retain control.

Trademark Infringement and Apple – a familiar story?

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It’s been widely reported that Apple is being sued by iCloud Communications, an Arizona based company, following its announcement about the launch Apple iCloud Services.

iCloud Communications’ lawsuit states that Apple is infringing its trademarked name iCloud. Apple has been involved in numerous lawsuits to do with copyright and trademark infringement within the last few years.

The idea behind Apple’s iCloud Services is that it will allow users to store all their data, such as music and photos, on the secure servers for easy access.  The service will be available from this Autumn and will be free to use for the first 5GB of storage.

iCloud Communications have stated that the online services Apple is providing are very similar to what they themselves provide:  ‘The goods and services with which Apple intends to use the ‘iCloud’ mark are identical to or closely related to the goods and services that have been offer by iCloud Communications under iCloud Marks since its formation in 2005.’

The company claims its business is already being affected by Apple’s new service announcement. It believes the term ‘iCloud’ is now being associated with Apple rather than with iCloud Communications, and so the company is seeking monetary relief.  It is also requiring Apple to stop using the name iCloud for any of its services.

It is not the first time Apple has been faced with lawsuits and allegations over trademark infringement. Even the name Apple sparked a legal battle with Apple Corp, the Beatle’s Record labe.  That trademark infringement dispute was resolved when Apple agreed not to use the name for music. Even once Apple launched iTunes, the company still got round the suit by agreeing to include the Beatle’s albums in their iTunes library. Following this, Apple has entered into a number of other legal battles over names they have adopted for their products or services.

For example, Apple has fought with Cisco over the name ‘iPhone’, and is fighting with Microsoft and McIntosh labs of Macintosh computers over the name ‘App Store’. So Apple’s clash with iCloud Communications follows in the line of many others.

Using such common names as Apple has chosen to do, it is not surprising that the company has run into a fair amount of legal trouble over them. Apple’s use of the lower-case ‘i’ being placed in front of common words is bound to result in other companies who also have similar names and ideas.

iCloud Communications in its lawsuit even pointed out Apple’s tendency to do so. They stated,although Apple aggressively protects its trademark rights, Apple has a long and well known history of knowingly and willfully treading on the trademark rights of others’

Apple has already spent $4.5 million on purchasing the domain name, whilst iCloud Communications owns the domain name So far Apple has not commented on the lawsuit, but by the look of things Apple must once again fight off a trademark suit in order to keep the name. In previous cases Apple has managed to settle out of court and has not had to change its desired product names. Will Apple be able to do the same this time?

Sony Ericsson withdraws from dispute with Clearwire

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There has been a new update on the Sony Ericsson trade mark dispute with Clearwire. In our previous blog we wrote about how Sony Ericsson sued Clearwire over the latter’s use of a similar green logo. Sony was concerned that Clearwire’s green swirl logo was getting closer to theirs. This came to a head when Clearwire, predominately known for pioneering 4G network services, indicated that it wished to bring out their own smart phone and therefore start competing directly with Sony Ericsson. For Sony Ericsson this was the final straw and they took legal action to protect their position.

However, the latest development is that Clearwire have made a representation to Court that they no longer wish to provide phones. Sony Ericsson have therefore decided to withdraw their legal action.

Sony Ericsson made the following official statement: “since Clearwire also previously announced it would enter the field of mobile devices by launching a smartphone, Sony Ericsson brought the litigation in January 2011 and sought a preliminary injunction against Clearwire to prohibit its further use of the logos. In response, Clearwire represented to the U.S. District Court for the Eastern District of Virginia that it had no present intention to launch a smartphone. This representation effectively provided Sony Ericsson with much of the emergency relief it sought.”

It has been said that Clearwire’s decision to withdraw from the smartphone market was also to side step confrontation with another competitor.