Trade Marks – Expect the Unexpected

Kylie Jenner, the daughter of Kardashian related celebrity Bruce Jenner,  has applied for US trade mark registrations for the word KYLIE, in relation to entertainment services, on line services  and advertising.  Australian pop legend Kylie Minogue has existing registrations for KYLIE, KYLIE MINOGUE, and various related trade marks, covering a wide range of goods and services, including entertainment services.  It has been reported that Ms Minogue’s company is proceeding to oppose Ms Jenner’s filings.  We do not act for any of these parties. 

Apart from the sheer celebrity tussle part of the tale, there are some important trade mark points to be understood here. I n most jurisdictions, there are specific provisions allowing for the good faith use of a person’s own name to avoid infringement of an existing trade mark registration.  Thus, despite the controversy, there is little Ms Minogue can do to stop the use of KYLIE JENNER in a fair way, for example on a line of cosmetics.  However, this is the whole name – this provision will not save use of a partial name, for example just KYLIE.   Ms Minogue seems to have filed prudently in the US, and likely will  have the upper hand for KYLIE.

The other point is that many trade mark disputes do not start from someone pirating or attempting to copy someone else.  Kylie Jenner was given that name by her parents, she didn’t make it up last week.  Similarly, a classic trade mark conflict form is when two parties, who have been happily trading is separate areas of commerce with similar trade marks for years, find themselves in the same market.  This can be by extending product lines, extending geography, attacking new market segments,  or even just changes in packaging.  One particular form over the last 10 year has been parties moving into e-commerce and finding the other party coming up on their client’s web searches.

These kind of disputes are interesting in that there is often not really a ‘good’ and a ‘bad’ party.  The parties have come to this point not by seeking to trade off anyone else’s reputation, but just because of circumstances.   In many cases, a deal for co-existence can be done.  It is an important part of trade mark practice to be aware of these issues, react early, and be prepared to reach a deal.  They can be litigated, but in this kind of case this may be  just an expensive way to reach an outcome that suits no one.

In this case, perhaps the two Kylies will reach a mutually agreeable deal.  That may be the best outcome for them both.

by Peter Franke