War of the Kylies!

Jenner tries to trademark the name ‘Kylie’... Minogue thinks she has a nerve, but does she have a right?

Trade marks have been in the spotlight over the past few weeks, as Kylie Minogue has launched an opposition against Kylie Jenner’s US trade mark application for KYLIE.  The Institute of Trade Mark Attorneys reported this to be one of the most shared news items on social media in the first week of March, with hordes of Kylie Minogue fans taking to Twitter with the hashtag #TheresOnlyOneKylie.

tweets using the hashtag #TheresOnlyOneKylie

The media has been positively whipped into a frenzy as Minogue’s US opposition refers to Jenner as a ‘secondary reality television personality’ and ‘supporting character’ in the reality television show ‘Keeping Up with the Kardashians’.

This story has only recently come to light; however, it seems the Minogue/Jenner battle started in Europe back in August last year.

The recent headlines have prompted us to investigate the situation in Europe and provide our insight into the likelihood of Jenner’s trade mark application overcoming Minogue’s objections and proceeding to registration, together with some tips on applying to register a name as a trade mark.

Background     

In April 2015 Kylie Jenner, most famous for being the half-sister of the ‘Kardashian Sisters’, applied to the European Union Intellectual Property Office (EUIPO) to register her first name ‘Kylie’ as a trade mark in the European Union.

The application seeks protection for services in classes 35 (advertising, marketing and promotion etc.), 41 (entertainment) and 45 (fashion information, advice and consultancy etc.).

The EUIPO examined the application and published it for opposition in May 2015.  In August 2015, Kylie Minogue’s representatives filed an opposition objecting to all of the services covered in Jenner’s application.

Grounds for opposition

The opposition is based on Minogue’s prior rights in existing registered trade marks, the majority of which are international trade marks covering the countries of the European Union.  In fact, Minogue currently has around 25 registered trade marks covering countries in Europe, in particular the UK, France, Germany and Malta.  Such trade marks include the identical mark KYLIE (registered in the EU, Germany and UK) and a stylised version of KYLIE (registered in France).  Other trade marks cited in Minogue’s opposition include KYLIE MINOGUE, KYLIE MINOGUE DARLING and KYLIE MINOGUE COUTURE.  Minogue’s trade marks cover a wide array of goods and services ranging from perfume, candles and stationary to music recordings and entertainment.

The main arguments of the opposition are as follows:

  • If the trade mark application were to be granted, there would be a likelihood of confusion caused, leading the general public to believe the goods/services offered under Jenner’s KYLIE trade mark originate from Kylie Minogue, not Jenner.
  • Allowing the trade mark would lead to an unfair advantage to Jenner and detriment to the distinctiveness and repute of Minogue’s brand.
  • Kylie Minogue is a famous Australian pop star who is widely known throughout the EU and the rest of the world simply as KYLIE. Therefore, KYLIE is the most prominent part of each of the cited trade marks, making trade marks such as KYLIE MINOGUE DARLING confusingly similar to KYLIE albeit not identical.
  • There is no way that Minogue can control the use of the opposed mark if granted and any unauthorised use of the mark would lead to damage to Minogue’s earlier trade marks.
  • Jenner’s application may cover services which are not strictly covered by Minogue’s existing registrations, such as advertising, marketing and promotional services and modelling for advertising or sales promotion in class 35 and provision of fashion information and recommendations in class 45.  However, there is a close connection between fashion and fashion related goods, as covered by Minogue’s existing earlier registrations in classes 3, 14, 18 and 25 and the services covered by Jenner’s application in classes 35 and 45.  Minogue also regularly models and partakes in fashion shoots.

Current situation

It seems that the parties are currently attempting to resolve things amicably and, as such, have requested a ‘cooling-off’ period in which to negotiate a settlement.

The EUIPO has granted the ‘cooling-off’ period allowing the parties until 16 August 2017 to come to an agreement and, if they cannot reach an agreement, proceedings will resume after this date.

We shall be keeping an eye out to see which ‘Kylie’ emerges victorious.

What do we think will happen?

There is no denying that Minogue has a strong case and will no doubt be able to provide evidence of use of her KYLIE related trade marks for all of the goods and services covered by the registrations.

If you ask any European that was old enough to listen to music in the ’80s, ’90s and ’00s, they are most likely to agree that Kylie Minogue is known just as ‘Kylie’ and are also quite likely to believe that a brand named KYLIE covering modelling for advertising, entertainment services and fashion information services, etc., originates from that Kylie.

Our bets are on Minogue succeeding in the opposition.  But only time will tell.

The situation may not be so clear cut in the USA, where Minogue has not enjoyed quite as much success and is not as much of a household name and where the Kardashian/Jenner family has an unprecedented fan base and following.  It will be interesting to see the outcome of both oppositions!

Applying to register a name as a trade mark

If you are considering registering a name as a trade mark it is certainly possible but, depending on the name, may be quite difficult and becomes more difficult when trying to register a first name on its own.

The question is not whether #TheresOnlyOneKylie as, of course, there is very rarely (if ever) one individual with a first name that nobody else shares.  The question when it comes to applying to register a name as a trade mark is whether there is another person or legal entity with prior rights in that name or a similar name, which cover similar or identical goods/services to the ones you wish to cover with your trade mark.

Before adopting or applying to register any new brand it is always advisable to conduct thorough trade mark clearance searches to identify any potential problems. If you are aware of  potential barriers to your proposed trade mark, you can make an informed decision to proceed or choose a different mark.  This helps reduce the risk of incurring costs in defending opposition proceedings and, in some situations, having to rebrand.

If you require advice on any trade mark matters (including clearance searching) or any other aspect of your intellectual property, you can contact one of our advisors by clicking here.

Liked this? Read last weeks article Magmatic v PMS reaches UK Supreme Court.


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