A Dutch makeup artist waited too long to bring a lawsuit against Kim Kardashian over her KKW beauty venture, according to Kardashian’s latest filing. After being slapped with a trademark infringement lawsuit in July, in which Kirsten Kjaer Weis alleged that Kardashian is infringing her “KW” trademark by way of the KKW brand, the budding beauty mogul’s legal team has filed its answer. In its formal response to Weis’ suit, Kimsaprincess Inc. – Kardashian’s corporate entity – denied Weis’ claims of infringement and put forth a couple of defenses, as well.
According to Weis’s lawsuit, which was filed in the U.S. District Court for the Northern District of Illinois, she has made use of her federally registered “KW” trademark since September 2010 on cosmetics, a full seven years before Kardashian launched her wildly successful KKW cosmetics line. Weis forther alleged that Kardashian’s use of the KKW logo is causing confusion amongst customers (the central issue for trademark infringement suits), and that such use is a "knowing, willing, and deliberate" choice made by Kardashian, whose KKW brand is a “direct competitor” of Weis’s line.
In addition to denying Weis’ trademark infringement and unfair competition assertions, Kardashian put forth two affirmative defenses: Laches, which asserts that the plaintiff waited an “unreasonable” amount of time before making an assertion or claim, or filing suit; and unclean hands, a defense that asserts that the plaintiff (Weis in this case) has acted in bad faith in connection with the subject of the complaint.
An affirmative defense is a fact – or set of facts other than those alleged by the plaintiff – which, if proven by the defendant (Kardashian here), defeats or mitigates the legal consequences of the defendant's otherwise unlawful conduct. In short: Even if Kardashian is infringing Weis’ KKW mark, that does not matter because: a) Weis delayed significantly in filing to suit against Kardashian; and b) Weis is acting in bad faith in connection with her own use of the KW trademark.
The unclean hands defense is almost certainly related to the fact that before launching her KKW line, "Kardashian received approval for KKW, KKW BEAUTY, and KKW FRAGRANCE from the U.S. Patent and Trademark Office," according to Kardashian's counsel. "When Ms. Weis asked for a re-examination, the USPTO again approved the brand names for Kim's company a second time. Kim has done everything by the book.”
The latest development comes after Kardashian scored an early win and got the case transferred to federal court in California. While neither Weis nor Kardashian is based in Illinois, Weis opted to file suit there, in part because she alleged that Kardashian’s collection was marketed and sold in the state but also because she did not want to file in Kardashian’s state of residence/operation, California. Why? Well, according to Weis, Illinois “is a middle ground in the interest of justice.” To be specific, Weis claimed that Kardashian could potentially derive an unfair advantage if the case played out on her home turf.
Despite Weis’ allegation that Kardashian has “nearly infinite resources to defend against [her] claims in any district,” the court held in November that they are to face off in California, “the same place where the allegedly infringing products are produced.”
The court further held that “while California might be inconvenient in some way for [Weis], she has already chosen a forum to which she would have to travel for this suit. Changing [the] venue to California would increase her cost of travel (at least marginally) but it would not create a cost for [Weis] where none had previously existed.”
The next hurdle before Weis will be showing that consumers are likely to be confused between her “KW” branded cosmetics and those bearing Kardashian’s “KKW” logo. Given the utter ubiquity of all things Kardashian and the insane success of Kim’ KKW beauty brand since its launch in June (In less than three hours after Kardashian’s first makeup line went on sale, all 300,00 products had sold out, bringing in an estimated $14.4 million), this will likely be something of an uphill battle for the much lesser-known Weis.
Stay tuned …
* The case is Kirsten Kjaer Weis v. Kimsaprincess Inc., 1:17-cv-05471 (C.D.Cal).