Ninth Circuit affirms injunction against Kira Plastinina
in light of plaintiff’s KIRRA registered trademarks
Clothier Pacific Sunwear of California, Inc., owns the registered KIRRA family of trademarks.
Competing clothier Kira Plastinina Style, Ltd., owns the KIRA PLASTININA trademark.
In 2008, Pacific Sunwear sued Kira Plastinina for trademark infringement.
Last year, the Central District of California found that Pacific Sunwear was likely to succeed on the merits of its claim and granted a preliminary injunction enjoining Kira Plastinina from using KIRA or KIRA PLASTININA as a trademark or trade name. However, the court clarified that “Defendants may use the phrase ‘Kira Plastinina’ (but not the single word ‘Kira’) in written displays, advertisements, or Internet pages to identify the actual designer of Defendants’ goods, as opposed to identification of the company, business, stores, goods, and services offered by Defendants.”
Kira Plastinina appealed, arguing that “Kira Plastinina” is the name of one of its designers and that the scope of the injunction was overly broad.
On Feb. 1, the Ninth Circuit affirmed.
It found “the district court correctly identified the legal standard for likelihood of confusion of a trademark, its findings of fact were not clearly erroneous, and the district court did not clearly err in finding a likelihood of confusion between the two trademarks. We therefore conclude that the district court did not abuse its discretion in holding that Pac Sun was likely to succeed on the merits of its trademark infringement claim.
“With respect to the scope of the district court’s preliminary injunction, the court did not abuse its discretion in restricting certain uses of ‘Kira Plastinina.’ Despite these restrictions, the injunction properly reflects a consideration of the ‘reluctance to preclude an individual’s business use of his name.’ Furthermore, enjoining use of ‘Kira Plastinina’ in media advertisements, including audio and video, was not an injunction against nontrademark use, and the district court did not abuse its discretion in enjoining such advertising. Finally, the preliminary injunction is sufficiently clear to protect Pac Sun’s interests and to provide KP Style with adequate notice of its provisions.”
The case cite is Pacific Sunwear of California, Inc. v. Kira Plastinina Style, Ltd., 2010 WL 358764, No. 09-55699 (9th Cir. Feb. 1, 2010).