Australia: Whats in a name? How to protect yourself if your name is your personal brand

Cher, Prince, Oprah, Bono – all of these celebrities have one thing in common – the capacity to be recognised by nothing more than a single name. For businesses which are built on the success of a personal brand, a name can be a crucial component of being recognised by consumers. But the question remains: should you be able to trade mark your own name for use on goods and services, and prevent others from doing the same? And do you have to be as famous as the celebrities mentioned above before you can do so?

This article discusses some of the difficulties around gaining trade mark protection for a name in Australia, and provides some recent examples which highlight the power of a well-known name and the importance of protecting that brand.

Trade marking a name in Australia

The first hurdle a business needs to overcome when thinking about trade marking a name is whether the name being used as a trade mark. That is, as a badge of origin. It is not enough simply to have a recognisable name: that name must be used as a trade mark attached to specific goods and services. For example, Taylor Swift has trade mark protection in Australia covering goods such as sound recordings, fragrances, clothing and footwear, and services such as live musical performances, websites, contests and fan-clubs. Tay Tay does not hold registered protection for all goods and services.

The next hurdle requires an examination of whether the particular name is prima facie capable of distinguishing goods and services. For example, registration of a trade mark for a clothing brand "John Smith" would be unlikely to succeed, even if John Smith really is the name of the designer. By contrast, more unusual first name and surname combinations are more likely to be considered distinctive. Think Carla Zampatti, Toni Maticevski and Collette Dinnigan, who have all successfully registered trade marks for their names which they use as the brands for their fashion labels.

Of course, another hurdle is the requirement that a business actually has permission for the celebrity/personality to use the name. This goes without saying, or perhaps not, as the cases below will illustrate...

And what about single name celebrities? It's likely to be only when you're extremely well-known that you will be able to register a single name as a trade mark. It's all well and good when you have an unusual name like Beyonce (who has a broad trade mark registration for her name in Australia), but what happens when celebrities start arguing about who is the most famous? Just ask Kylie Minogue and Kylie Jenner.

Jenner v Minogue: the battle of the Kylies
In 2015, Kylie Jenner applied to trade mark the name KYLIE in the United States (and later in other countries, including Australia) for advertising and endorsement services, and entertainment services. Unsurprisingly, the application caught the attention of another celebrity, who has been famous all over the world as 'Kylie' since before Jenner was even born.

Minogue opposed the registration of Jenner's mark in the US, arguing that she had a number of existing registered KYLIE-formative marks long predating the filing of Jenner's mark (as well as the domain name, and that given the similarity between the goods and services offered by both Kylies, consumers were likely to be confused.

Minogue's lawyers couldn't resist the opportunity to take a swipe at the source of Jenner's fame (or infamy, as some might argue), calling her a "secondary reality television personality" and noting that her "photographic exhibitionism and controversial posts have drawn criticism" from various groups. As a result, they argued, registration of Jenner's mark would lead to a dilution of Minogue's KYLIE brand.

The case was repeatedly suspended in 2016 for settlement negotiations, and on 19 January 2017, Minogue withdrew her opposition, allowing Jenner's registration to proceed. Reports suggest that the parties agreed to a settlement, so those following the duel from afar missed out on seeing the opposition conclude. However the case highlights the importance of monitoring the market for use and filings of your brand (particularly where it is used by another well-known personality), and being able to show what rights and reputation you hold in that name.

But what happens when someone else tries to trade mark your famous name?
If a third party tried to register a celebrity's name in Australia, this would be grounds for an objection as it is likely to suggest endorsement, licence or approval between the celebrity and the goods or services. This ground is important in this day and age, as it is increasingly common for celebrities to endorse a wide range of goods and services, unrelated to their field of expertise. From perfumes and jewellery, to apps and fitness programs.

But what about when an unsuspecting mortal simply wants to trade mark their name, but is beaten by the god that is celebrity? Spare a thought for artist Matt LeBlanc, lawyer Paul McCartney, and writer Julia Roberts, who would probably have trouble registering a trade mark for their own name!

It's a different story in China which, unlike Australia, operates on a first-to-file basis. This means that the first person to register a particular trade mark becomes the legal owner, regardless of whether they have a legitimate claim to the mark. This can lead to unusual and sometimes perverse results.

For example, First Daughter Ivanka Trump remains hugely popular in China, and Chinese businesses have sniffed a marketing opportunity. The South China Morning Post has reported that at least 65 trade mark applications have been submitted by Chinese companies to use the word "Ivanka" on their products, covering anything from beauty goods to weight-loss products and sanitary napkins.

If Ivanka is concerned by these filings, she should take heed of the expensive and time-consuming lesson learnt by Michael Jordan and Nike, who have been locked in a years-long legal battle against a Chinese sports company.

In the late 1990s, Qiaodan Sports filed for trade mark registrations covering the Chinese character and Romanised pinyin transliterations of Jordan, being ?? and QIAODAN for use in connection with its sports stores. Nike and Jordan failed to take action against these filings until 2012, by which time Qiaodan Sports was hugely successful, with over 6,000 stores across China. In December last year, Jordan secured a partial victory: the People's Supreme Court in China ruled that ?? was primarily associated with Jordan the person, not the company, and cancelled these marks. However, the Court also held that Qiaodan Sports will be able to continue using the pinyin transliteration QIAODAN. It is reported that a separate naming rights case is yet to be heard.

Lessons to be learnt
The experiences of Kylie Minogue, Ivanka Trump and Michael Jordan all underscore the importance of obtaining registered trade mark protection over your brand, whether that be your name or some other recognised badge of origin.

And the importance of gaining protection is not just limited to first-to-file countries such as China, with the Minogue vs Jenner battle emphasising how a prior registration can support your claim for prior rights in countries such as the US and Australia.

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