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Importance of Trademarks
According to the World Intellectual Property Organisation, "a trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors”. In layman terms, trademarks are what give’s one’s brand or logo a unique identity. The fundamental reason for a trademark to be legally protected is to enable the owner of that particular trademark to unapologetically advertise & sell their product without any confusion arising with another product of the same name. Though trademarks can be similar to each other, the situation becomes ambiguous when they are ‘confusingly similar’. A trademark is confusingly similar to a prior mark if it is used for similar goods and so closely resembles the prior mark that there is a likelihood of consumers being misled as to the origin of the goods.
The Claim against Hailey Bieber's brand, Rhode
A recent celebrity case has shed further light on trademarks and its respective laws and protections. Hailey Beiber a renowned model, socialite and entrepreneur not to mention the fact that she is married to the famous Justin Bieber and is the daughter of one of the famous Baldwin brothers from Hollywood recently launched her skin care brand called ‘Rhode’. But another brand called ‘Rhode-NYC’ sued Bieber on 21st June, 2022 in the United States District Court for the Southern District of New York, claiming she had launched her beauty brand after trying and failing to secure trademark rights from their fashion brand. The two plaintiffs, namely Purna Khatau and Phoebe Vickers claimed that Bieber’s brand had infringed their trademark and that the latter’s counsel had reached out to them in 2018 to buy the company's trademark registration. But after the co-founders declined to sell, Bieber continued to seek registration on the name for clothing and bags and eventually launched the skin care line "in bad faith."
The matter of ‘confusion
In their suit, the two plaintiffs stated that customers were likely to confuse the two brands, which would cause Rhode to "lose control over its goodwill and reputation" that it had spent years building. This of course would be exacerbated by Bieber’s social media presence whereby it is highlighted that the celebrity has 45 million Instagram followers and 9.2 million followers on TikTok. Rhode-NYC also claimed that Bieber chose to use this to “squash a woman and minority co-founded brand that simply cannot compete with her immense fame and following" and that the defendants had been unjustly enriched consequently. In fact, Rhode-NYC owns trademark registrations for "Rhode" on various goods, including apparel, handbags and textiles, and hair accessories. Bieber’s legal team though argued that their company’s focus was on ‘skincare’ and not ‘clothing’ and as a result this refuted the confusion.
The Remedies Sought
The lawsuit sought a permanent injunction barring Bieber and her companies from "imitating, copying or making unauthorized use" of the Rhode marks, and from using any name or mark that would lead people to believe Bieber's Rhode products and services were related to Rhode-NYC. Another remedy sought was a preliminary injunction barring Bieber from using Rhode "as a name, trade name or trademark, as a domain name, on social media accounts, or in any other way that is likely to cause confusion" with the fashion brand.
Judgement
On 23rd July, 2022, the New York Federal judge ruled that Hailey Beiber could keep promoting her new beauty brand Rhode for the time being. According to the concise order, the request for a preliminary injunction was denied after a documentary created by Bieber’s team on the making of her brand was shown to the court.
