South Africa: Battle Of The Two Kylies And Celebrity Endorsement

Last Updated: 10 March 2017
Article by Gaelyn Scott

Most Read Contributor in South Africa, July 2017

A recent US case involving the "two Kylies" shows just how important trade marks are for celebrities.

In this case, Kylie Jenner, the reality TV personality linked to the Kardashians, filed a US trade mark application for "Kylie" in respect of advertising and endorsement services. Kylie Minogue, the singer and actress, opposed this trade mark application, claiming that the name Kylie is associated with her, and that confusion is likely. It transpires that Kylie Minogue already has US registrations for trade marks incorporating the name Kylie. These registrations don't only cover sound recordings and entertainment services, but also other goods such as perfumes, toiletries, jewellery, magazines, dolls and toys. Kylie Minogue apparently also owns the domain name and the associated website

In her papers, Kylie Minogue made the claim that, whereas she is an "internationally renowned performing artist, humanitarian and breast cancer activist", Kylie Jenner is simply a "secondary reality television personality", one who has drawn criticism for her "photographic exhibitionism and controversial posts" on social media. Ouch! Hostilities appear to have ceased – the opposition to the trade mark application has been withdrawn, and it seems that some agreement may have been reached. Perhaps Kylie Minogue will at last be able to get Kylie Jenner out of her head!

This case illustrates how famous people are often able to use their fame and trade mark rights to make even more money. A person who achieves fame through a career in entertainment or sport will often protect their trade mark – which might be their name, nickname, signature, image or even characteristic gesture – in categories such as clothing and cosmetics, and then license third parties to use that trade mark for those goods. In the case of Kylie Minogue, we understand that her trade marks have appeared on fragrances, furniture and clothing.

A person may even achieve fame through the efforts of others. It has been well reported that Melania Trump is suing the UK's Daily Mail newspaper in regard to articles that suggest that the first lady may have once worked as an escort. Mrs Trump originally based her case on the fact that she now has a once-in-a-lifetime opportunity to cash in on her name through endorsements and licensing deals, an opportunity that the newspaper may well have jeopardised with its nasty reports. Following criticism that this might not really be an appropriate claim for a first lady to bring, we understand that the emphasis of the claim has now shifted from lost commercial opportunities to emotional distress.

Celebrity trade mark spats are not uncommon and we've reported on quite a few in the past. We reported on the dispute between the artists William James Adams, aka, and Pharrell Williams. opposed a US trade mark application filed by Pharrell Williams for "i am OTHER" on the basis of possible confusion and dilution. We reported on how singer Taylor Swift registered certain of her lyrics, such as "This Sick Beat" and "Cause We Never Go out Of Style", as trade marks for a range of merchandise, and then faced criticism from a far less well-known singer for seeking to limit freedom of speech.

Celebrities also face problems with companies seeking to capitalise on their fame. We reported on how Beyoncé had a problem with a company that sold goods such as mugs and sweatshirts under the name Feyoncé. We reported on how Rihanna sued retail chain Topshop for passing-off when it sold T-shirts bearing her image without consent. Rihanna successfully claimed that people seeing these T-shirts would erroneously believe that she had endorsed the product, and the court's decision was strongly influenced by the fact that Rihanna had endorsed similar products in the past. We also reported on how Brazilian football legend Pelé sued Samsung for using a Pelé look-a-like in an advert. Pelé's case was based on the fact that the public would wrongly think that he had endorsed the product, and that it harmed his endorsement rights. Like Rihanna, Pelé has endorsed many products.

The rights of celebrities don't even have to come to an end on death, as another case that's going on in the US right now makes very clear. In this case, the estate of the late actress Marilyn Monroe is suing a clothing company called Fashion Central for using the late star's image, as well as wording that is suggestive of famous Marilyn Monroe quotes. The estate apparently has 14 US trade mark registrations comprising the late star's name and identity.

While the concept of celebrity endorsement does exist in South Africa, perhaps it isn't as well-established as it is in places like the US. If you are well-known, perhaps it's time to say "I should be so lucky", and start thinking about licensing and endorsement deals.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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