The US Supreme Court, yesterday, denied the European firm's petition for a Writ of Certiorari to review an earlier Appeal Court decision.
The former exclusive European distributor of US brand ‘Kroma’ cosmetics sought action against the Kardashian sisters and Boldface Licensing & Branding for infringement through the 2012 launch of ‘Khroma’ cosmetics, later rebranded ‘Kardashian Beauty’ in 2013. The rebranding occurred following a settlement with Kroma trademark owner Lee Tillett. Kroma EU was also seeking action against its previous business partner Tillett on a ‘breach of contract’ theory, given settlement funds were not shared.
Keeping up with the Kardashians? ‘No standing’ in the US
Kroma EU filed a petition for a Writ of Certiorari to the Supreme Court at the beginning of September, calling for a review on April’s Appeal Court decision to uphold the initial 2015 ruling that the distributor had “no standing” to pursue the trademark infringement. The US Supreme Court denied the petition yesterday.
Commenting on the Supreme Court petition rejection, J. Michael Keys, intellectual property attorney and partner at international law firm Dorsey & Whitney, quipped the Supreme Court had decided “not to keep up with the Kardashians”.
“At issue in the case is whether an EU company has sufficient rights to sue the famous sisters here in the US for trademark infringement under our US laws,” Keys told CosmeticsDesign-Europe.
“Both the trial and appellate courts said the EU company didn’t have standing under our trademark laws, and the Supreme Court agreed.”
A lack of federal trademark ownership
The ruling and upheld appeals ruling iterate Lee Tillett was the legal owner of the federal trademark 'Kroma'; not Kroma EU, despite its exclusive license to import, sell and distribute the brand across Europe.
The Appeals Court ruling said the business agreement between Kroma EU and Tillett “plainly authorized only Tillett to enforce the trademarks” and to “protect” the mark “from any attempts of illegal use”. It ruled Kroma EU’s sole directive was to simply inform Tillett of instances of infringement.
The court said the licensee agreement did not give Kroma EU enough “rights in the name” to sue.
“The plain language of the agreement demonstrates the parties’ intent for Tillett to retain all ownership and enforcement rights. Kroma EU – while it may have other rights under the agreement – does not possess the ability to assert its rights in the mark in this proceeding,” the United States District Court for the Middle District of Florida ruled.