In the present times where most celebrities are generally very protective of their own brands, however, they sometimes turn out to be careless in their use of others’ intellectual property.

One can’t surely assume them to be ignorant or unaware, as, in the following two particular cases, the trademark infringement happened even after the necessary due diligence with the knowledge that the use of the particular brand name would lead to legal repercussions.

HAILEY BIEBER TRADEMARK INFRINGEMENT

Hailey Bieber’s new skincare brand, Rhode, is undergoing a trial for trademark infringement. A week after the release of her highly anticipated Rhode beauty brand, Hailey Bieber was sued by an LA fashion label Rhode over potential trademark infringement.

“Rhode” which is a nine-year-old fashion brand co-founded by Purna Khatau and Phoebe Vickers, filed a suit against the model and her two companies in an effort to protect their original trademark in the U.S District Court for the Southern District of New York. 

Purna and Phoebe stated that they had launched their brand in May 2013 and have diligently dedicated themselves to growing and nurturing the Rhode brand through much personal sacrifice and hardship. Currently, their brand is well established and has been a successful venture, its products being sold at major luxury retailers earning them millions annually as well as being accepted by a long list of high profile and famous celebrities such as Rihanna, Beyonce, and Tracee Ellis Ross. 

The fashion brand owns the ‘Rhode’ trademark for apparel and accessories with goals to expand the trademark to include additional categories such as home goods, even makeup and skin care.

Khatau and Vickers said in a joint statement that they “were compelled to initiate a lawsuit against Hailey Bieber and her skin-care company, which opened last week and is utilising the trade name “Rhode”. 

They argued that as a global brand, their business is still young and cannot compete with the star power of Hailey Bieber using the trademark to launch her own line of skincare.

“her utilising our name is damaging our firm, our staff, our customers, and our partners.”

It was also revealed that Hailey has expressed her desire to launch a clothing line, and even filed an application for the registration for the trademark ‘Rhode’ to be used in the apparel industry. The brand has also made the revelation of Hailey’s attempts to buy the rights to the name, however, had been declined.

The lawsuit filed by the plaintiffs claims that buyers could mistake the two companies and that immediate, continuous, and irreparable injury to the Rhode brand would result from the size of Bieber’s fan base and the virality of her marketing.

Hailey Bieber, married to Justin Bieber, is well-known, having amassed over 45 million Instagram followers, 9.2 million TikTok subscribers, and an A-list social network including Kylie Jenner and other successful businesswomen. She has used social media to advance her business; one of her posts advertising Justin Bieber’s cosmetics lines had over 1.5 million likes. On Instagram, some users have already mistakenly tagged the wrong Rhode in pictures.

The brand through the suit filed in the court is requesting the federal judge to immediately block Bieber’s use of the brand name, which however also happened to be her middle name (under the federal Lanham Act and New York common law.)

The counsel for the Rhode Brand has termed the dispute as an unfortunate circumstance. They assert their understanding of Hailey using her middle name for the brand, but this arose a textbook case of reverse confusion, in which a massive junior trademark user threatens to trample a smaller senior user’s market.

Presently in the suit pending above, the federal judge in New York on Friday denied the plea for an injunction on the sale of Rhode skincare products, owned by Hailey Biber and declared that the model can continue promoting her beauty brand Rhode for the time being. This is a concerning matter for the plaintiffs in their bid to protect their exclusive claim over the Rhode trademark. The trial for the trademark, however, continues to be pending in court.

KIM KARDASHIAN TRADEMARK INFRINGEMENT

Kim Kardashian’s freshly launched skincare line has run into trouble after Cyndie Lunsford filed a complaint against the reality TV star, accusing her of trademark infringement by using the name SKKN by Kim. 

The lawsuit details Lunsford’s use of the name SKKN+ in both Washington and New York since 2018 as well as via the skknplus.com domain name.

“An enrolled trade mark is infringed by a person who, not being a selected proprietor or an individual user by means of permitted use, includes overtrade, an engraving which is undefined with or misdirecting like the trade mark association with work and items in respect of which the trade mark is joined up and in such manner as to convey the use of the engraving inclined to be taken as being used as a trade mark”

As per the court records, the Brooklyn-based association Beauty Concepts is the plaintiff in the case. They ensured that they had as of late held “SKNN+” and had associated with Kim Kardashian and Co. with an ultimate objective to stop the new skincare line from using a brand name exorbitantly like theirs.

Further, Lunsford claims that its Beauty Concepts parent company filed a trademark application for the name two days before the Coty-owned skincare brand and contacted the same to request that they drop the use of a mark ‘incorporating the most significant elements of Beauty Concepts’ mark’.

According to Lunsford’s June 28 complaint, Beauty Concepts has conducted business continuously under the SKKN+ name in Washington, DC and/or New York, New York, since at least August 2018. She stated that the company has “used the SKKN+ Marks” in conjunction with providing upscale salon services and goods offered both offline and online. 

According to the publication, the firm launched its Instagram profile and the URL www.skknplus.com in 2018, with the first post using the SKKN+ logo and promoting skincare products. The lawsuit filed by the plaintiff states that “Beauty Concepts actively seeks to advertise, market to, and serve clients of all genders, races, and ethnicities, specializing in corrective skincare for all skin types.

Notably, Beauty Concepts is a Black-owned business and seeks to ensure its services specifically serve Black women and other women of colour, who have been historically underserved, excluded, and diminished by the beauty industry,”.

However, according to Kardashian’s attorney Michael Rhodes, the complaint is less about trademark law and more about attempting to use Ms Kardashian’s brand and reputation as leverage to get a settlement. As a result, they anticipate making their case in court since using such frivolous means won’t work.

The 44-year-old mother of four, Kim initially revealed that KKW Beauty was going through a rebrand in July of 2021. Kim Kardashian’s attorney states that her legitimate gathering furthermore determined that after the bombarded tries, the battling association endeavoured to make its business seem, by all accounts, to be more than it is.

Supposedly before the show, Beauty Concepts had “no signage” and “sold no things” associated with their “SKNN+” logo. Nevertheless, when Kardashian’s new skincare line officially shipped off, it evidently leased a perfect retail exterior and advanced other displaying endeavours, including changing its site. The rep was firm that being a privately owned business without anyone else didn’t give it a choice to shut down an overall skincare line. He suggested that the certified motivation for the legitimate mission was to get a fantastic payout from a notable face like Kim’s.

Thus, the request made by the brand to Kim to stop using a name similar to their own was rejected by her company, which then further incited the Beauty Concepts gathering to scrutinise the celeb’s applications for the brand name in the United States Patent and Trademark Office (USPTO). The USPTO however has excused the case too, on account of the word being alluded to being an unsure reference to “skin” generally.