Keeping Up With The Kylies
For many people, becoming a household name is a distant dream. For others, it is a reality that they are not willing to give up lightly. So much so that seeking trade mark protection for a name has become increasingly popular in the world of celebrity, where public appearances and social media have turned individuals into a global brand for which their name is the label.
The latest case of eponymous trade marking brings to the fore the question of whether a name is as unique as some may think. In a recent conflict between recording artist Kylie Minogue and Kylie Jenner, of Keeping Up With The Kardashians fame, exclusive rights to trade under the name “KYLIE” have been hotly contested worldwide.
In April 2015, Jenner filed US trade mark applications for the exclusive right to use the mark “KYLIE” in connection with cosmetics, fashion information services, and advertising, endorsement and entertainment services, only to have these blocked in February 2016 by Minogue’s attorneys. The opposition was based on Minogue’s prior trade mark registrations for the name, the earliest dating back to 2003 - when Jenner was just six years of age! (Jenner’s trade mark portfolio extends beyond these opposed marks and also includes registrations for KYLIE JENNER, illustrating how filing a trade mark application for a full -name is less vulnerable to opposition from third parties).
Through KDB Pty Ltd, an Australian company that manages Minogue’s trade marks, Minogue owns a string of “KYLIE” and “KYLIE MINOGUE” trade mark registrations in the US, covering goods such as cosmetics and perfumery, and the provision of entertainment and education. Minogue opposed three of Jenner’s trade mark applications, claiming that their registration would result in identical marks existing side-by-side, being used in the same ways, and sharing a similar consumer base, which would inevitably cause confusion amongst the public.
Not stopping there, Minogue’s opposition also argued that, if Jenner were to have rights to and use the mark “KYLIE” in trade, there was a risk of dilution (blurring and tarnishment) of Minogue’s trade marks and reputation. Minogue’s attorneys did not hold back in their comparison of the women, arguing that Minogue’s status as an “internationally renowned performing artist, humanitarian, and breast cancer activist” would be damaged if she was mistaken for or associated with Jenner, who they characterised as a “secondary reality television personality” criticised for her “photographic exhibitionism and controversial posts”.
Given this rather unfriendly backdrop to the case, it came as a surprise to discover that Minogue withdrew the opposition to Jenner’s US trade mark applications on 19 January 2017. Reviewing the documents available from the US Patent and Trade Mark Office, it appears that the two parties had been negotiating for some time, and it is therefore assumed that a settlement agreement has been reached.
In parallel proceedings in the European Union, however, the outcome has gone in Minogue’s favour, with Jenner withdrawing trade mark applications for “KYLIE”, for entertainment and fashion advice, and “KYLIE COSMETICS”, following opposition from Minogue. It seems possible that, as Jenner’s profile is greatest in the US, an agreement may have been reached whereby Minogue has agreed to permit the registration and use of “KYLIE” in the US by Jenner, provided that Minogue maintains the “KYLIE” monopoly across Europe.
A behind-the-scenes conclusion (for now, at least) to a trade mark case involving two distinctly public personalities.
16 February 2017