This article is written by Deena Nawab pursuing a Diploma in Advanced Contract Drafting, Negotiation, and Dispute resolution from Lawsikho. This article has been edited by Ojuswi (Associate, Lawsikho). 

This article has been published by Sneha Mahawar.

Introduction

What makes you say that the cosmetic products which are purchased by you are authentic? For me, authenticity plays a role when purchasing a cosmetic product which is not inferior. This includes the logo, the place where it is being sold, its dominance in the industry, the price at which it is sold, and cross-checking that the product doesn’t mismatch in any way with the original cosmetic product. So it is quite evident. Customer Loyalty in the Cosmetic Industry is gained only through the dominance of the brand in the market and the goodwill attached to the business. Customer loyalty and goodwill can only be achieved in the second place. The first place is the Trademark of the Beauty Brand. Coming to the point, the Kardashian family has been placing its dominance in the Cosmetic Industry. This article will be discussing one of the most adored brands which appeals to the eyes of most women. That is Kim Kardashian’s cosmetics and the trademark dispute which arose when KKW was rebranded as SKKN for a skincare line.

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About Kim K’s cosmetic products 

Kim Kardashian’s fans love to copy her outfits, makeup and lifestyle. After Kim’s sister Kylie, Kim started her brand known as KKW. Kim didn’t eventually venture herself into the Cosmetic Industry but her love for face contours made her do so. In the initial stages, she collaborated with her sister Kylie cosmetics by creating a kit of four nude lipsticks. She dynamically launched her brand named KKW Beauty on June 21, 2017. KKW Beauty had begun only by selling contours and highlighters, the products were sold immediately after its launch just within two hours. And, expanded through the love and the growing demand of it by the consumers. Due to its popularity, in a short span of time special edition kits of contour, highlighters and lip glosses were also being sold.

Surprising her fans further, the Instagram diva launched perfumes as KKW fragrances with 3 crystal-inspired scents. Presently, the KKW Beauty line expanded and is offering up to all makeup products with fragrances over six scent pillars.

The transition from KKW to SKKN

On August 1st, the KKW Beauty website was shut down by Kim Kardashian. As by her statements, she wants to make a comeback with a better and different name. Including new formulas which seem to be innovative, modern and packaged in an elevated and sustainable new look. But yet, until now there has been no launch of it on her side. The new brand name which is likely to replace KKW Beauty is SKKN. On March 30th, Kim Kardashian filed a trademark application for SKKN. However, what she faces later is a legal dilemma. 

While the registration of the trademark was done, Kim Kardashian’s lawyer got slammed with a Cease and Desist Notice by Beauty Concepts LCC. The renowned brand has claimed that they have been in the use SKKN+ brand since 2017. Providing salon and skincare services which are owned by Cydnie Lunsford.  Beauty Concepts adamantly stated that not just this, they also operate a website and social media handles using the letters SKKN+.  There has also been an application of the words to the U.S Patent and Trademark Office to register the SKKN+ logo. 

Keeping up with SKKN in the USPTO

SKKN+ filed its application 2 days before an application filed by SKKN by Kim, on March 28th, 2021. On the examination performed in the Trademark Office, SKKN was not found to be descriptive despite the pronunciation being “SKIN”. SKKN by Kim covers classes 3 and 44 along with other additional classes that are suspended until the issues with Beauty Concepts SKKN+ are resolved. Even though there is an addition of BY KIM along with SKKN this does not resolve anything. The confusion caused between SKKN+ and SKKN BY KIM does not resolve or become less by avoiding or adding a distinctive matter to the mark. KIM K no matter is more successful and if USPTO goes in favour of SKKN, it would not be surprising for her fans. The Kardashian sisters are not new to inter-party proceedings enabling them to actively enforce their rights on brands and judgments passed in their favour. 

Trademark confusion under Indian law

There has been no further legal update between the two parties. But for instance, if this situation arose in India, the Registrar under the Trademarks Act, 1999 is entitled to the power to deal with the matter as per the act. The situation which is described above between Kim K’s SKKN mark and Beauty Concept SKKN+ would be administered by the Trademark Registrar. The Registrar would in most cases reject Kim K’s application under section 11 of the Trademarks Act,1999 as relative grounds for refusal of registration. BY KIM SKKN is similar to the earlier trademark SKKN+ which has higher chances of confusion among the public. As this avoids the unfair advantage that could be detrimental to the distinctive character or reputation of the earlier trademark.

Indian cases on matters of confusing trademarks

Below are a few judgments listed for the use of the deceptively similar trademark by the defendant with an earlier existing trademark:

In the case of Parle Products (P) Ltd. Vs. J.P. and Co., Mysore AIR 1972 SC 1359 stated that: When deciding whether one mark is deceptively similar to another, the court decided that the main aspects of the marks must be considered. It is not necessary to retain both marks side by side for a registered trademark that is likely to confuse or mislead the public or any specific individual as being a product with a registered trademark when it is not. It is sufficient to infer that an infringement has occurred.

In Maruti Udyog Ltd. and Suzuki Motor Corporation v. World Information Pages, 2000 (WIPO Arbitration and Mediation Centre), the respondent, used the domain name marutisuzuki.com, which was identical/similar to the complainants.

The respondent’s domain name was “marutisuzuki.com,” whereas the complainant was “Maruti Suzuki.” The WIPO Arbitration and Mediation Centre noted that Maruti Udyog Ltd. utilised the hybrid mark ” Maruti Suzuki” on a variety of goods, as well as brochures and ads. Respondent’s claim that Maruti is the name of an Indian God and that it is acceptable for naming their website since nothing is possible without God’s blessing was dismissed as a ruse with no validity. It does not affect the domain name’s identification in relation to the mark. It was also discovered that the World Information Pages had no legal right to the domain name in question. It was decided that the World Information Pages domain name will be handed to Maruti Udyog Ltd.

IN CADILA HEALTHCARE LTD V/S CADILA PHARMACEUTICALS LTD, 2001: The Supreme Court chose to avoid interfering with past decisions by carefully examining the principles. It highlighted the reasons for the non-interference and indicated that any opinion from the court without proof is unwise and that the court must evaluate all principles before passing any judgement. In making its decision, the court looked at pertinent instances. The court had said in National Sewing Thread Co. Ltd., Chidambaram Vs. James Chadwick and Bros Ltd., AIR 1953 SC 357, that any trademark registration application that is likely to cause confusion must be denied by the Registrar (Section 8 of Trademarks Act). It further noted that it was the applicant’s responsibility to persuade the Registrar that his trademark did not violate any of the Trademarks Act’s prohibitions. As a result of analysing the relevant sections, sub-sections, and acts, the court determined that purchasers of such drugs, whether pharmacists or not, should be considered men of ordinary intelligence capable of making mistakes. The court decided that it was a case of deceptive similarity, based on the provisions of Section 8 of the Trademarks Act, 1999, and Section 17-B of the Drugs and Cosmetics Act, 1940, and that any confusion could have serious health consequences. In this case, the following were some of the most essential characteristics to consider while analysing fake similarity:

  1. The origins of markings.
  2. The degree of resemblance between competing marks, both phonetically and visually
  3. Goods’ nature.
  4. This is the location where the items are utilised.
  5. The goods’ similarities in terms of efficacy, performance, nature, and so on.
  6. The intended users of the items, their intellect, and the level of caution that must be used.

Conclusion

Well, that can’t be said that there would be no use of SKKN by Kim Kardashian since the trademark application for SKKN is already done. But unfortunately, there has been a lockdown on the @SKKN social media account and SKKN.com by Kim K’s legal team. SKKN+ has over 8000 plus followers on Instagram.  The popularity of the brand on social media is also recognized by the number of followers it has gained. Also, Beauty Concept has invested its valuable time, effort and money to reach this far. 

Beauty concepts may be a smaller brand compared to KKW. But the use of SKKN by Kim K would cause confusion amongst the people. There is a trademark registration for SKKN but the matter is under examination for opposing SKKN by Beauty Concept. And, there is no further update on the use of SKKN by Kim Kardashian until the matter is resolved legally. 

References 

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