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Trademarks : Celebrity Dish on Kylie vs Kylie

Kylie Minogue started opposition proceedings against Kylie Jenner after Ms Jenner made an application to trademark her name in the United States through her company Kylie Jenner Inc.

Ms Jenner filed an application on 1 April 2015, making a claim in class 35 for advertising services which promote the brands, goods and services of others as well as endorsement services to promote the goods and services of others.

Australian based company KDB Pty Ltd (‘KDB’) representing Ms Minogue filed a Notice of Opposition on 22 February 2016, opposing all Ms Jenner’s claims in class 35. In the notice, KDB cited various existing trademarks in the name of KDB which formed the basis for the opposition including KYLIE MINOGUE DARLING, KYLIE, LUCKY – THE KYLIE MINOGUE MUSICAL and claimed prior rights. The Notice also stated that registration of Ms Jenner’s mark would cause damage, bring the KDB marks into disrepute and lead to the likelihood of confusion among customers as well as cause dilution.

Ms Jenner also filed a trademark on 1 April 2015 for KYLIE in class 41 in connection with entertainment services, in particular, for pop culture and personal appearances by a celebrity, actress and model. She filed another trademark application in class 45 covering the supply of information by means of a global computer network in the field of fashion. The trademark was published for opposition on 23 February 2016.  So far, KDB is noted on the record as a “potential opposer” and has been granted to 22 June 2016 to oppose the mark. Watch that space.

Notably, in the United States, KDB has a trademark registration for KYLIE in class 41 for “education and entertainment” but not in class 35.  Ms Minogue was first to file and obtain protection for the brand in class 41 for entertainment services but it appears that Ms Jenner was first in line to file in class 35 for advertising services. So what rights could class 35 gives Ms Jenner? A registration in Class 35 could give a trademark owner the exclusive rights to promote and advertise the goods and services of others using the name KYLIE, in other words, endorsement rights to use fame and celebrity to advertise and promote other brands which can generate significant sales revenues and brand awareness. Nice.

The legal wrangle has spread to Australia too. On 21 September 2015, Ms Jenner filed in classes 35 and 41 in Australia for advertising services and entertainment services. On 29 September 2015, Ms Kylie Jenner and Ms Kendall Jenner filed for the name KENDALL + KYLIE in classes 35 and 41 and on 12 February 2016, Ms Jenner filed for KYLIE COSMETICS in classes 3 and 35.

Ms Minogue has a trademark registration for KYLIE in class 3 which covers cosmetics and in class 41 which covers entertainment. Tellingly, the claim in class 41 registered in the name of KDB covers education and entertainment whereas Ms Jenner’s application seeks to claim “entertainment in the nature of providing information by means of a global computer network in the fields of entertainment, fashion and pop culture, entertainment services, namely, personal appearances by a celebrity, actress and model”. Ms Jenner’s application also claims a convention priority of 1 April 2015 based on her trademark in the United States.

The main issue here is who has the better rights to the name KYLIE as a stand alone mark for the goods or services claimed.  The legal arguments in the matter will be sure to cover issues of confusion, priority and reputation in both jurisdictions. Remember that a registered trademark gives trademark owners the exclusive rights to commercially use the mark to brand the goods and services in the class claimed. A registered trademark is, therefore, an extremely valuable asset.

The lesson to be learned here is that while being the first to file a trademark does not guarantee success, the message to prospective trademark owners is that the “early bird gets the worm”. It is very important to protect your brand as soon as possible and to make an application that not only covers your existing goods and services but also goods and services that you anticipate that you may supply in the future.

W3IP Lara 3 Lara Alexandra

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Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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