SKKN in the game: Factors to consider in trade mark disputes

There’s a time and place for resolving trade mark disputes in an adversarial manner (courts, solicitors’ letters, etc.), and there are other times where both parties can come to a mutually satisfying conclusion using some common sense, especially when it’s prudent to consider the non-legal factors at play.

One current example of this in action is a case involving Kim Kardashian (apparently one of the most famous people on Earth). Ms Kardashian has attributed her name to a skincare brand, ‘SKKN BY KIM’. However, a small independent aesthetician studio based in Brooklyn, New York, claims to have filed to register a trade mark ‘SKKN+’ before Ms Kardashian’s product launch. Ms Lunsford, a sole trader, owns the studio. The case illustrates the importance of thinking holistically about your dispute and not focusing on the zero-sum game of total victory in court.

While the full facts of this dispute are unclear, Ms Kardashian’s lawyers have refused to accede to Ms Lunsford’s demand for a substantial settlement, deeming it ‘a shakedown’.

For their part, Ms Kardashian’s lawyers did reach out to Ms Lunsford’s representatives, trying to find a sensible path to coexistence. According to Ms Kardashian’s lawyers, they did not engage beyond demanding a large sum of money.

While both sides are due to meet to seek a resolution, the case highlights the importance of early action to protect your trade mark before someone else swoops in, intentionally or not, with a similar trade mark that may confuse your customers as to the origin of your goods or service.

Of course, it is possible, even likely, that both sides will come to an agreement without the need to fight it out in court, which will be very expensive. This is especially so for Ms Lunsford, who we presume will not have the resources that a 15-year global entertainment, reality television, fashion design, and business empire affords Ms Kardashian. For example, when two trade marks are similar, it can be quicker, cheaper and less costly than a full rebrand or court battle to enter into a co-existence agreement with the owner of the similar trade mark.

A co-existence agreement could cover matters such as regulating the use of the trade marks, and divvying out what countries, territories, classes of goods and services the marks can be used in. It could also have confidentiality and announcements provisions preventing the parties from discussing the specifics of the dispute or the terms of the co-existence/settlement agreement. For example, Pizza Express trades as ‘Milano’s’ in Ireland as the name was unavailable in 1995 when they first expanded outside the UK. Similarly, ‘Pennys’ operates as ‘Primark’ in most markets outside of Ireland. Bulmer’s cider goes by the name of Magner’s outside of Ireland. The whys, hows and the airing of dirty laundry in the media can be avoided by carefully drafting a co-existence agreement with the appropriate confidentiality provisions and other protections.

If you have any queries about your trade mark or someone is trading under a confusingly similar name, Briffa can help you assess the best way to reach a mutually satisfactory fix. To book a free consultation, with one of our specialists, contact us on info@briffa.com.

Written by Mark Eiffe – Solicitor