Something Stinks: Nina Ricci Sues for Patent and Trade Dress Infringement for Perfume Bottle Design, Taking Two Bites of the IP Apple
On March 16, 2009, Parfums Nina Ricci filed suit against National Entertainment Collectibles Association, Hot Top, and others, for design patent infringement, trade dress infringement, and other common law unfair business practices, stemming from Nina Ricci’s rights in an apple-shaped bottle containing the fragrance “Nina” (the “Nina Bottle”), for which it has a U.S. design patent.
Ricci took the first bite, alleging defendants began marketing their Twilight perfume using an exact replica of the Nina Bottle without Ricci’s permission, thus infringing Ricci’s patent rights and trade dress rights in the bottle. Judging from the pictures above, one of these actors appears to be a rotten apple.
The Nina Bottle, on the right, was the first market entrant and, and Nina Ricci protected its unique apple design with a design patent. It also claims common law trade dress rights in the appearance. A brief online search revealed upwards of 6 other perfume bottles with the apple design, but none (other than the defendant’s) particularly similar to the Nina Bottle.
This suit presents an interesting question regarding the issue of whether one can protect identical intellectual property elements under both patent and trademark. Perry Saidman of Saidman Design Law Group, which specializes in design patents, notes that the prevailing view is that an owner can get design patents for market-entry protection, and later, when secondary meaning attaches, secure trade dress protection for roughly the same configuration. Saidman also commented that the issue of whether an owner can get both patent and trademark protection for a design is ripe for the Supremes, who have thus far side-stepped the issue in other patent cases.