Friday, 10 February 2017

It’s a case of better the Kylie you know as trade mark battle ends

Australian pop-star Kylie Minogue’s long running battle with reality tv-star Kylie Jenner, and Jenner’s attempt to trade mark the name ‘Kylie’ appears to have ended. 

Kylie Jenner, the youngest of the Kardashian clan, submitted a U.S. trade mark application in 2015 to protect her first name in relation to advertising and endorsement services. 

Minogue’s representative business, KBD, retaliated by filing a notice of opposition to the application on the basis that Minogue is an “internationally renowned performing artist, humanitarian, and breast cancer activist known worldwide simply as ‘Kylie’” while Jenner is “a secondary reality television personality”.  The notice went on to argue that the Kylie trade mark would likely cause confusion with, and tarnish, Minogue’s long list of existing trade mark registrations including Kylie Minogue Darling, Kylie Minogue and her website

However, on 19 January 2017 Minogue withdrew her opposition, indicating the parties may have reached a settlement over the famous ‘Kylie’ name. 

Jenner is not the first celebrity to attempt to trade mark her name. While rapper 50 Cent successfully trade marked his name, Beyonce and Jay Z’s 2012 application for their daughter’s name ‘Blue Ivy’ was rejected because it is also the name of a wedding planning company. Celebrities often secure trade mark registration in the U.S. on the basis their name has acquired a “secondary meaning” i.e. has become closely associated with a particular product or service such as an entertainment service. 

In Australia, you can register a personal name as a trade mark, provided that trade mark is inherently adapted to distinguish the goods or services in question, and there are no prior conflicting trade marks e.g. fashion designer Collette Dinnigan has registered her full name, and the Bradman Foundation has registered both 'Bradman' and 'Don Bradman' as a trade mark. However, common names are likely to be rejected on the basis that other traders need to use the name (but all is not lost if you can provide substantial evidence of use).

Belinda Breakspear
Eliza Humble

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