The Kardashian family have become a household name and have strategically exploited the intellectual property rights in the family name in order to build a Kardashian empire and capitalise on their fame.
Many will be familiar with the name Kim Kardashian, she is the second eldest Kardashian sibling, a reality TV superstar and wife to rap superstar Kanye West.
Kim has tactfully built a brand around her image and has ventured into clothing, perfume, music, mobile gaming and even launched her own ‘selfie case’ – LuMee phone case, designed to help users achieve the ‘perfect selfie.’
KKW Beauty
In June this year, Kim announced that, like her younger sister Kylie, she too would be releasing her own line of beauty products named KKW Beauty. As a consequence of the same, Kim successfully registered KKW, KKW Beauty and KKW Fragrance with the US Patent and Trademark Office.
However, in the last few months, Kim has found herself embroiled in a trade mark infringement dispute. Kim is being sued by Danish makeup artist Kirsten Kjaer Weis who alleges that Kim’s KKW Beauty infringes her registered trade mark. According to the papers filed by Weis in the U.S. District Court for the Northern District of Illinois, Weis’ states that she has used the “KW” trade mark since September 2010 on cosmetics and that KKW Beauty’s use of a similar logo for the same goods is causing confusion amongst customers and infringes her registered trade mark.
Weis has asked that the Court block Kim’s use of the “KKW” logo and has also asked that the Court force Kim to destroy all goods which bear the mark. Further, Weis asks that Kim be ordered to pay to her damages, including lost profits and legal costs.
Whether Weis will be successful in her case against KKW Beauty remains to be seen, however, given Kim’s fan following, the likelihood that consumers would confuse the two brands seems unlikely.
The case marks an example of a long list of instances in which the Kardashian family have been the subject of IP infringement action both in and out of Court.
Selling merchandise under a celebrity brand has become a lucrative business for celebrities and a great source of income. Celebrities are now more aware and savvy with the way in which they protect their brand in order to capitalise on the same.
One way to do this is to register a brand name or logo as a trade mark, as once it is successfully registered, it enables the registered proprietor to prevent others from using that mark to the goods and services registered to that mark.
Whilst the dispute between Kim and Weis will take place in the US Courts, the principle applies equally in the UK.
Had Weis not registered the “KW” trade mark, she would have a much more onerous task ahead of her as she would have to rely on passing off to try and prevent Kim’s continued use of the “KKW” mark. Further, given Kim’s registration of the “KKW” mark, Weis would also have to apply for Kim’s trade mark to be revoked on the basis of her earlier use of the “KW” mark.
As passing off and an application for revocation can be extremely difficult to prove and costly, it is less burdensome to apply for registration as a means of protecting a brand name or logo at its inception. Consequently, given the protection afforded to a registered mark, registration is much more attractive and naturally, many celebrities are opting to proceed down this route.
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