Australia: Will the real Kylie please stand up? Trade mark opposition put in (loco)motion

At some stage or another, we have all heard someone attest to the value of having a good name. This is especially true for businesses and celebrities, whose names convey or carry a specific, brand, image or reputation.

What happens when you wish, as a business or individual, to capitalise on your name and associated brand? You need to take care, as the youngest member of the Kardashians, Kylie Jenner, recently discovered when her application in the U.S. for the trade mark of her name 'KYLIE', was opposed by Australia's very own Kylie, Kylie Minogue.

Kylie vs. Kylie

In May 2015, Ms Jenner, through her company Kylie Jenner Inc, applied for a trademark in the United States for the word 'KYLIE', under trade mark class 35, which covers advertising services, including advertising brands, goods and the services of others and endorsing/promoting the goods and services of others.

A Notice of Opposition was filed on 22 February 2016 by KDB Pty Ltd (KDB), an Australian based company representing Kylie Minogue on the basis that to allow the registration of Ms Jenner's application would cause confusion, dilution and that the following trade marks owned by KDB, were filed and used first by KDB:

  • The plain word 'KYLIE MINOGUE DARLING' in class 3 for use in relation to fragrance and cosmetic products;
  • The plain word 'KYLIE' in class 41 for use in relation to education and entertainment purposes;
  • The plain word 'KYLIE' in class 9 for music recordings, including pre-recorded optical discs featuring video clips; and
  • The plain word 'KYLIE' in class 28 for use in relation to Jewellery, bracelets, necklaces and the like.

Additionally, KDB highlighted its ownership of the domain name, and tellingly, even asserted that Ms Jenner is a 'secondary reality television personality'.

The Notice of Opposition highlights some important realities that all businesses need to understand and consider in relation to trade marks for both goods and services.

Registration of a business or corporate name

In Australia, whilst the incorporation of a company or the registration of a business name on the Business Names Register provides evidence of the existence of the business/corporate entity, the name under which the entity trades is not adequately protected and as a result, the business has no right to act to prevent the use and infringement of that name by another business, or worse, to use the name of their own business, if that same use would result in an infringement of an existing trade mark.

It is therefore crucial that businesses understand the distinction between business or company names and the proprietary ownership of the intellectual property rights pursuant to a validly registered trade mark, given the importance of maintaining a well-known name and brand that people cannot get out of their head.

The exclusive rights of a trade mark owner

Ultimately, most successful businesses trade off their brands and the developed reputation that they carry, but too often, as appears to be the case with KDB, businesses fail to turn their minds to the full scope of current and future goods services that the business will provide and file the registration of relevant trade marks accordingly.

What would happen in Australia?

In Australia, a trade mark application will be accepted where the applicant for the trade mark is able to demonstrate that their goods or services are sufficiently distinguishable from the goods or services of others, in relation to the class of goods and services, of which there are 45, in which the trade mark seeks registration.

In the above circumstances, Ms Jenner would need to demonstrate that her application for the trade mark of her name 'KYLIE', for the advertisement and promotion of goods and services, is sufficiently distinguishable from the goods or services of Kylie Minogue and her registered trade marks.

On the face of it, KDB has registered rights for 'KYLIE' for a broad range of goods and services including, education and entertainment and the two trade marks are identical.

But does this mean that Ms Jenner's trade mark application will be rejected?

In Australia, pursuant to section 44 of the Trade Marks Act 1995 (Cth) (the Act), the application would be rejected if the trade marks examiner is satisfied that Ms Jenner's prospective 'KYLIE' trade mark is substantially identical with or deceptively similar to KDB's plain word 'KYLIE' trade mark in respect of similar goods or closely related services, or similar services or closely related goods. Ultimately, filing in a different class is not a guarantee that a proposed trade mark will not fall within the test outlined in section 44.

If an examiner were to accept the application, it would be then incumbent upon Ms Minogue to oppose the application, which would likely include a ground of opposition under section 58 of the Act. That ground involves the application of the narrower test than section 44 of the Act – namely that the use must be in relation to goods or services that are "the same kind of thing" or "essentially the same" (see Colorado Group Limited v Strandbags Group Pty Limited (2007) FCAFC 184). The success of that ground of opposition would turn on the evidence.

Time will tell whether Ms Minogue should be so lucky, but the lesson for businesses and individuals is clear.

Businesses need to:

  • Undertake necessary due diligence before filing an application for registration of a trade mark in order to determine whether there are any conflicts;
  • When filing an application for the registration of trade mark, ensure that you file in all of the correct classes, adequately describing the goods and services that your business provides, both now and in the near future; and
  • Give careful consideration to the future goods and services that your business may provide and seek registration in those classes at the time of filing to ensure that your trade mark rights are adequately protected, in classes that you will likely use in the future.
  • However, this needs to be considered in light of the non-use provisions contained within Part 9 of the Act require a trade mark owner use their registered mark and do so in good faith, failing which an application for removal of the mark can be made, providing a period of 5 years has passed since the original date of application for registration of the trade mark. In certain circumstances, "defensive" trade mark applications can be made to avoid the risks of a non-use application.

Whilst some business may successfully navigate the arrival of a competitor with a similar name or brand, or even a change in name, as demonstrated by artists like Prince, whose name could not be verified at the time of writing, others may not and it is advisable that this situation be avoided completely by adopting the above steps at the inception of a venture or as early as possible, to protect their good name and brand.

© HopgoodGanim Lawyers

Award-winning law firm HopgoodGanim offers commercially-focused advice, coupled with reliable and responsive service, to clients throughout Australia and across international borders.

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