Just a few months ago, a federal judge in the Central District of California refused an injunction application filed by Lost International, LLC to stop renowned artiste Lady Gaga from distributing merchandise bearing the word “MAYHEM”. Lost International, LLC is a California-based surf apparel and streetwear brand, distributing surf equipment and apparel using its registered “MAYHEM” trade mark. They brought an infringement suit against Lady Gaga, who was distributing “MAYHEM” merchandise in conjunction with its “MAYHEM”-titled studio album. Although the infringement suit has yet to be decided, the federal judge has refused the injunction application, on the basis that Lady Gaga’s use of the trade mark is artistically relevant and does not explicitly mislead consumers.
Trade mark cases involving celebrities are not unheard of. Below are some other such cases over recent years:-
- In 2024, the Full Court of the Federal Court of Australia declared invalidation of the “KATIE PERRY” trade mark registered by Australian designer Katie Taylor. Going back to the history of this case, Katie Taylor filed this trade mark back in 2008 and later brought a trade mark infringement claim in 2019 against American singer Katy Perry and her associated companies (collectively “Katy Perry”) for selling clothes and merchandise bearing “KATY PERRY”. Katy Perry cross-claimed and applied for the “KATIE PERRY” trade mark to be invalidated. The Federal Court of Australia initially decided in Katie Taylor’s favour, but Katy Perry’s appeal to the Full Court was successful, and the Full Court decided that the “KATIE PERRY” mark was invalid as it was likely to deceive or cause confusion. Also, Katy Perry had an established reputation in Australia and this extended to clothing goods, before the “KATIE PERRY” mark was registered. Katie Taylor was granted special leave to appeal to the High Court of Australia, but there has yet to be any updates or public decisions released in this respect.
- In 2023, Lefty Paw Print, LLC (a company owned by American singer Pink) filed an opposition against the “P.INC” trade mark filed by PW IP HOLDINGS, LLC (a company owned by Pharrell Williams) in class 35 in the US. Lefty Paw Print is the owner of several existing “PINK” trade mark registrations in classes 9 (covering musical sound recordings) and 41 (covering entertainment services). According to Lefty Paw Print, “P.INC” is similar to “PINK” and the intended goods and services under both trade marks are closely related. Subsequently, PW IP HOLDINGS, LLC filed an abandonment of the “P.INC” trade mark.
- When celebrity Hailey Bieber launched her skincare line in 2022 under the brand name “RHODE”, a New York-based clothing store, Rhode-NYC, LLC filed a lawsuit against her entities, Rhodedeodato Corp. and HRBeauty LLC, alleging trade mark infringement and unfair market competition. According to Rhode-NYC, LLC, there is potential for “reverse confusion”, which is where a junior but larger entity (in this case, Bieber’s entities) adopts a mark identical or similar to a small, prior user (in this case, Rhode-NYC, LLC)’s mark, such that the public could mistakenly believe that the prior user’s goods and/or services originate from or are associated to the junior but larger entity. It would appear that both parties have since achieved settlement, and dropped all claims against each other.
Naturally, when celebrities are involved, the public takes more interest. That said, even if you are a less known individual or small company setting up your business or just about to enter the market, it remains high priority that you obtain trade mark protection, and ensure that you have conducted sufficient due diligence before making use of any names for your brands and products. Clearance searches, review of existing registrations and rights, and in some cases, consideration of established reputations in the marketplace should be undertaken in the initial stages. The “KATIE PERRY” trade mark case highlights how prior reputation and goodwill outweigh registration of a trade mark.
It is also possible that either or both parties in a trade mark case may claim that much effort has been placed into building a brand, but all efforts can be in vain when it is later discovered that the brand conflicts with another existing trade mark in the market. The commercial consequences of such disputes can be significant, including legal costs, delayed product launches, withdrawal of stock, rebranding exercise and in some cases, parties may suffer reputational damage. This is especially so for the fashion and beauty industries, which are highly competitive and driven by rapid trend cycles.