We all love a good post about the Kardashians (see here). Last time we blogged about the Jenner sisters (Kendall and Kylie) applying for trade mark applications in the US for their first names, as well as the phrase “Kendall and Kylie”.
Well, since our last post, the USPTO accepted the application and hot-pants-Kylie (Minogue) has now filed an opposition against hot-lips Kylie (Jenner)’s application for the word mark KYLIE which covers “advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others” in class 35 (super broad, we know).
Minogue’s opposition has been filed on the basis of a number of pending and registered marks, including:
|KYLIE MINOGUE DARLING||Pending|
|KYLIE||Pending – filed 21 May 2015|
|LUCKY – THE KYLIE MINOGUE MUSICAL||Registered|
Well, Minogue has priority in respect of KYLIE, but only in relation to class 9 (sound recordings), 14 (jewellery), 16 (printed matter) and 28 (toys). In Australia, classes 9 and 16 would be considered an associated class to 41 and therefore likely to contain goods or services that are similar or closely related).
Jenner has another pending application for KYLIE (which covers entertainment services in class 41 and the provision of information by a global network in class 45) in the US, which was only open to opposition on the 23 February 2016. We expect Minogue will be filing a Notice of Opposition against that application too.
What would happen if this was in Australia?
Will this fight spill over to Australia? What would happen if it did? Well, interestingly Jenner has also applied for the KYLIE word mark in Australia, but an Examiner’s Report has been issued against it – no doubt because of Minogue’s prior marks for KYLIE. If accepted, Minogue would most certainly oppose the Jenner application on her home turf.
So who would win the battle in Australia? Well, Minogue is definitely the original “Kylie” in Australia. She’s had rights in this trade mark since 2001 (and arguably has had common law rights in this name since the 80s)! Minogue has quite the portfolio in Australia – she has 17 trade mark registrations which incorporate the word KYLIE. Here’s a snapshot of what she owns:
Leaving aside grounds of opposition based on Minogue’s prior trade mark registrations, in Australia, you can oppose a trade mark on the basis of it being similar to another trade mark that has acquired reputation in Australia where use of the first mark is likely to deceive or cause confusion because of that reputation. We think Minogue would have clear grounds of opposition in Australia – yes, she has acquired a reputation in KYLIE in Australia and yes, we think there is a real risk of deception or confusion because of that reputation.
What about the US?
Assuming Minogue filed the opposition on similar grounds of opposition in the US, the case in the US is not so clear.
Minogue’s strongest argument in the US would be the likelihood of confusion. But, in the US, it is a defence to an opposition that there is no likelihood of confusion. Could Jenner argue that she is so famous that no one could possibly get her confused with Minogue? Surely, the Jenner “Kylie” is now the better known mark (just ask her 52.8 million followers on Instagram)!
Minogue could also argue that her mark is well-known/famous. However, the strength of that argument is not so clear as it would largely depend on whether the USPTO regards Minogue as “well-known/famous” in the US. We all know that her career never really took off in the US…she only sold 500,000 copies of her album in the US. Is this enough to combat Jenner’s fame?
The other thing about the US is that it recognises the concept of trade mark dilution (this is not expressly recognised in Australia). In essence, this is where the distinctiveness or uniqueness of a “famous” trade mark is lessened by another party’s use of a similar/identical trade mark. But could Jenner argue acquiescence – that Minogue has allowed her trade mark KYLIE to be diluted? Kylie Jenner has been around for a while…in 2014, she was already named one of “The 25 Most Influential Teens of 2014” by Time Magazine.
We’d say Minogue has a bit of a battle on her hands in the US.
The difficulty is that the trade mark KYLIE is a very common name, and lacks distinctiveness. Will the two celebrities be able to co-exist as KYLIE? Probably not – this is a fight to watch! There can only be one Queen Kylie!