THE FASHION LAW EXCLUSIVE - Rihanna is in the middle of a trademark infringement lawsuit in connection to her new fragrance, Kiss by Rihanna. Plaintiff Kiss Nail Products, Inc. (“Kiss Nails”) filed suit in the U.S. District Court for the Southern District of New York against Roraj Trade LLC, owner and manager of Rihanna’s intellectual property, and Parlux Fragrances, LLC, a manufacturer and distributor of beauty products, including fragrances. Kiss Nails alleges that the defendants are on the hook for willful trademark infringement, false designation of origin, and unfair competition.
According to Kiss Nails’ complaint, it “has used the unique and distinctive mark KISS to identify its products for more than 27 years.” The New York-based brand alleges that it has received recognition throughout the fashion industry, has had its products used on the runways of designers like Naeem Khan and Christian Siriano, and has been featured in national publications including O, The Oprah Magazine and People Style Watch.
Kiss Nails claims that Rihanna’s fragrance, which was released early this year, infringes its numerous trademark registrations for the “KISS” name – some dating back to as early as 1993 – in Class 3, which covers cosmetics, nail care products, and hair tools, among other goods. The company argues that Rihanna’s “Kiss Fragrance has been promoted using the hashtag “#kiss” on Rihanna’s official website, www.rihannanow.com … Rihanna has also promoted the Kiss Fragrance using the hashtag “#kiss” on her personal Instagram, @badgirlriri.”
Kiss Nails claims that it initially notified the defendants of the infringement in late January, but they “have not stopped selling or offering for sale the Kiss Fragrance, and it is still available for sale as of the date of this filing.”
Although Rihanna’s Kiss products are not nail care products specifically, Kiss Nails asserts that the fragrance is “related to [its] beauty, nail care, and cosmetics products,” closely enough “to cause consumers to believe that the Infringing Kiss Fragrance originates from and/or is affiliated or associated with Kiss.” This is particularly true, according to Kiss Nails, as some of its beauty products are sold in the same stores as Rihanna’s fragrance, including Walgreens, Duane Reade, Target, and CVS.
The complaint asserts that the defendants “have without authorization deliberately and willfully infringed Kiss’s KISS Mark by manufacturing, distributing, selling, marketing, and/or promoting the Infringing Kiss Fragrance, and continue to do so … with the intent of trading on the goodwill and reputation of Kiss, and with full knowledge of, and in conscious disregard of, Kiss’s rights.”
As a result, Kiss Nails “seeks a permanent injunction and monetary relief” of an amount to be determined at trial – although if past cases are any indication, this case will likely settle (for an undisclosed amount) long before a trial takes place.
The case is KISS NAIL PRODUCTS, INC. (d/b/a Kiss Products, Inc.) v. RORAJ TRADE LLC and PARLUX FRAGRANCES, LLC, Civil Action No. 1:17-cv-01291 (SDNY).