Back in April 2015, television personality Kylie Jenner applied to trade mark her first name and full name with the U.S. Patent and Trademark Office (USPTO). The applications covered several registration classes in the USA, including bags, clothing, swimwear and fragrances.
A trade mark is an exclusive right, which enables the owner to stop others from using the mark in the same class of goods/services in which the mark is registered (i.e. clothing or music) and in a way that would be deemed confusing to consumers.
By successfully registering trade marks in these classes, Jenner would obtain the exclusive right to use them and could take legal action against any use of her trade marks by third parties without her consent.
An opposition was filed by Australian singer Kylie Minogue in February 2016, who has registered two US trade marks for ‘Kylie’ in classes relating to entertainment and advertising/endorsement services.
Minogue’s representatives argued that if the applications were successful, this would cause confusion among consumers and would result in the dilution of Minogue’s well-established brand.
In the opposition, Jenner was referred to as a ‘secondary reality television personality‘ who is a ‘supporting character in the Keeping up with the Kardashians television show and is arguably much better known for her active media presence and her photographic exhibitionism and controversial posts.’ Minogue’s representatives argued that the registration of Jenner’s proposed trade marks would tarnish the distinctiveness and reputation of Minogue’s brand.
Given that the primary purpose of a trade mark is to indicate the origin of goods/services, in order to be successful it must be recognised by the public as being associated with the registering brand. Minogue’s representatives attacked Jenner’s application on the basis that ‘Kylie’ is most commonly associated with Minogue, given her presence in the entertainment industry since 1988. Jenner first appeared in the reality TV series ‘Keeping up with the Kardashians’ in 2007 and is one of the most followed personalities on social media.
In March 2016, the proceedings were put on pause to allow the parties to enter settlement discussions and as of 19 January 2017, Minogue’s opposition was withdrawn. ‘Kylie’ was filed at the USPTO on 6 February 2017 and the application is currently under examination.
The details of the settlement have not been published but it is likely given the value of ‘Kylie’ to both brands, that restrictions on Jenner’s use of the trade marks have been agreed and significant sums of money have been paid to enable the applications to proceed.
This long running battle demonstrates the value placed on the protection offered by trademarks. It also highlights the importance for brands to consider opposing any third party trade mark applications which may dilute and/or damage their established reputation, with a view to preventing its registration or obtaining acceptable settlement terms for use.