She should be so lucky: Kylie Minogue opposes Kylie Jenner’s bid to trade mark “KYLIE”
Article written by: Nadia Ormiston, Friday 4th March 2016
Kylie Minogue has made her feelings clear over the trade mark dispute breaking out over the name “KYLIE”.
The tweet is a lyric from her song and 2000 album “Lightyears” and refers to the trade mark dispute she now faces with 18 year old Kylie Jenner.
Kylie Minogue, who as of 2015 had record sales of over 80 million records is described in the dispute as “internationally renowned performing artist, humanitarian, and breast cancer activist, known worldwide simply as “Kylie””.
Kylie Jenner is an 18 year old reality TV star, the youngest of the Kardashian-Jenner sisters best known for Keeping up with the Kardashians. Now a socialite, model and author, Jenner is prolific on social media, boasting over 80 million followers across various platforms. No stranger to self promotion, she uses her social media pages to endorse products for sums of up to $300,000 per post.
Jenner has sought to register KYLIE as a trade mark in the United States covering:
- advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others.
The trade mark was filed in May 2015, accepted by the USPTO and advertised for any interested party to oppose. This week Minogue, through KDB Pty Limited, filed that opposition. KDB own a number of the Australian pop star’s trade marks: “Kylie Minogue”, “Kylie Minogue Darling” (her perfume brand) and “Lucky – the Kylie Minogue musical”.
The case highlights legal issues that can arise in the world of “brand celebrity”. Where endorsement and sponsorship deals are often the most lucrative aspect of a celebrity’s brand, their name (and likeness) becomes their business. This poses an awkward issue in trade mark law, where celebrities might have to share not just the spotlight, but their naming rights too.
KDB objects to Jenner’s application on the grounds that registration of the mark will lead to a likelihood of confusion among consumers, and dilute and tarnish KDB’s other trade marks.
While it is possible for identical marks to co-exist on the register, they can’t co-exist where the goods and/or services are identical, or so similar that confusion between the two marks is likely (unless consent is given by the prior registrant).
Unfortunately for KDB, none of the prior registrations actually cover the same or similar services sought by Jenner’s application. While one of the KYLIE marks covers musical entertainment services (inter alia), this may not be sufficiently similar.
KDB are therefore in the predicament of arguing that use of the KYLIE trade mark by KDB has expanded to use on additional products and services, including those services sought by Jenner’s application.
KDB have claimed that their expanded use, plus substantial investment by KDB (time, effort and money) in protecting and policing KDB’s marks awards KDB significant non-registered statutory and common law rights in the KYLIE trade mark in respect of the services claimed by Jenner. As such, any use by Jenner of KYLIE (as a trade mark, not as her own name) is likely to be associated with Minogue.
KDB also argue that, on top of confusion, any future negative publicity dished out to the “secondary television personality” for her “photographic exhibitionism” may become associated with Minogue and thereby dilute KDB’s marks. In December, Jenner caused controversy by posing in a wheelchair for a photo-shoot with Interview magazine.
As a Notice of Opposition is a preliminary step in opposition proceedings, KDB do not have to file any evidence of the above until Jenner responds. Evidence is anticipated to include Minogue’s ownership of www.kylie.com (since 1996, a year before Jenner was born), her prominence in the entertainment industry since 1979, and her first album, titled “KYLIE” in 1988. For Jenner, while she hasn’t trade marked her name yet, she has prior use of it on her own line of beauty products, which sold out in seconds.
This isn’t the first time Courts have become embroiled in celebrity name disputes. In 2007, Angelina Jolie lost a five-month battle against perfume designer Symine Salimpour who trade marked the name SHILOH, the name of Jolie’s daughter with Brad Pitt. To pre-empt any similar dispute, Beyonce and Jay-Z filed a trade mark application in their daughter’s name, Blue Ivy Carter, just days after her birth in 2012.
In New Zealand, a name dispute arose in 2007 between Auckland fashion designer Trelise Cooper and Arrowtown fashion designer Tamsin Cooper over the latter’s trade mark application for TAMSIN COOPER. Trelise argued that she had such strong common law rights to the name TRELISE COOPER that another fashion designer should be prevented from using her own name if it was confusingly similar. She alleged that Tamsin Cooper’s conduct amounted to a breach of the Fair Trading Act 1986 and the common law tort of passing off. The parties agreed to an ‘amicable’ solution outside of court.
This one will be an interesting fight on a global scale, because while Minogue is still an international star, especially in the UK and Australia, Jenner is by far the more famous in the United States. While no Court date has been set, the dispute continues on twitter, Minogue’s fans tweeting #TheresOnlyOneKylie.
This article was written by Rachel McDonald and Megan Hutchison.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.