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Hailey Bieber is a well-known model, media personality and socialite, as well as being married to singer Justin Bieber. Earlier this month, Hailey Bieber launched her new “Rhode Skin” skin-care range.  Presumably, she is hoping to emulate the success of other personalities such as Kylie Jenner. Unfortunately for Bieber, she has now found herself in hot water with a trade mark infringement claim from fashion label Rhode (Rhode NYC LLC).

To make this issue relevant to Australian readers, we will look at the parties’ respective US trade mark registrations and apply the Australian Trade Marks Act 1995 to the infringement analysis.

when does infringement arise?

In Australia, trade mark infringement arises when a person uses a trade mark that is substantially identical or deceptively similar to a registered mark:

• in relation to the goods or services in respect of which that earlier mark is registered (section 120(1) of the Trade Marks Act 1995);
• in relation to goods of the same description as the registered goods, or in relation to services that are closely related to the registered goods, unless it can be established that the trade mark use is not likely to deceive or cause confusion (section 120(2)); or
• in relation to unrelated goods or services, provided that:
  • the registered mark is well known in Australia;
  • because that earlier registered mark is well known the later mark is likely to be taken as indicating a connection between the owner of the registered mark the unrelated goods or services; and
  • the interests of the registered owner are likely to be adversely affected (section 120(3)).

what is registered?

Rhode NYC LLC has US trade mark registrations for “RHODE” in relation to a range of clothing, handbags, blankets, towels, hair scrunchies, dolls, puzzles and even Christmas tree ornaments.  However, its trade mark registrations do not cover skincare or cosmetics.

By contrast, Hailey Bieber’s company Rhodedeodato Corp has applied to register “RHODE” in relation to a range of beauty and skincare products. That trade mark has been accepted for registration by the US Patent and Trademark Office. However, under US law, registration cannot be completed until it has been used in commerce in the USA.  This usage requirement does not exist in Australia.  Given that Bieber’s products have now launched, we can expect the required statement of use to be filed soon and US registration completed.

would there be infringement in australia?

At first glance

Bieber’s trade mark use is not in relation to goods that are the same as Rhode NYC LLC’s registered goods (the section 120(1) infringement test).

Under the section 120(2) test, the question of whether the goods are “similar goods” requires that they be goods of the “same description” as the registered goods. Do the goods have a relationship such that a purchaser would think that they had the same trade origin?

While Rhode NYC LLC may not have a range of beauty and skincare products, it might argue (if this is the case) that many other clothing brands do sell these products. That argument may assist in establishing the second part of section 120(2).  That is, consumers are likely, knowing that some clothing brands do have skincare ranges, to draw the inference that Bieber’s products are connected with Rhode NYC LLC.

If Rhode NYC LLC could not succeed under section 120(2) then it would need to rely on section 120(3).  It would need to be able to establish its trade mark is well known, and that people are therefore likely to perceive a connection between Bieber’s goods and Rhode NYC LLC.

We cannot comment on the prominence or recognition of Rhode NYC LLC’s trade mark and whether, in the Australian context, its prominence would be sufficient to give rise to infringement under section 120(3).

Rhode NYC LLC does use its trade mark in relation to a small range of goods beyond clothing, including coasters, cushions and puzzles. But it appears to be very much a clothing brand. This makes it less likely that, on seeing “RHODE” skincare, a consumer would necessarily assume that it must be yet another of Rhode NYC LLC’s diverse product range.

Exceptions and defences

Rhodedeodato Corp is likely to shortly finalise its trade mark registration. This is important, because a trade mark owner cannot infringe somebody else’s mark, provided that the use is in relation to the goods and/or services in respect of which that mark is registered. Trade mark registration provides an effective exception to an infringement claim (NB: potential claims for a common law passing off or statutory misleading and deceptive conduct are not excluded).

A further exception exists in section 122(1)(a) of the Trade Marks Act, that a mark is not infringed if a person uses, in good faith, the person’s name or the name of the person’s place of business. “Rhode” is Hailey Bieber’s middle name. However, this exception would not apply here because it is Bieber’s company Rhodedeodato Corp that is using the “Rhode” mark. “Rhode” is also not Bieber’s name, it is only part of her name.  There has also been a suggestion from Rhode NYC LLC that such use is not in good faith, as Bieber allegedly tried to buy the “Rhode” trade mark 4 years ago and so was well aware of the brand.

take-away points

If occurring in Australia, Bieber’s latest venture would be unlikely to infringe the earlier “Rhode” trade marks because the respective goods are sufficiently different, and her company is also likely to have the protection of its own trade mark registration.

This illustrates the importance of being aware of the existing trade mark field before entering the market. Any prior trade mark vetting would clearly identify the existence of Rhode NYC LLC’s prior registration. Any prior marks can then be assessed whether there is concern in the context of the differences in the respective goods.

It also shows that registering one’s own trade mark is important, given the infringement exception that it creates. Trade mark registration can be valuable as a shield from infringement claims, not just as a sword used to bring a claim.

The Macpherson Kelley IP team can help with all aspects of trade mark law, from prior vetting searches and registrations to supporting you in any disputes that you may encounter over your or somebody else’s use of your trade marks.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.