When Kylie Jenner applied to register her name as a trade mark in the US, she probably thought it would be as easy as her meteoric rise to fame since the success of her family’s show Keeping Up With the Kardashians. Kylie Jenner had clearly underestimated the pint-sized Australian superstar Kylie Minogue, whose earlier registered rights pack a powerful punch!
According to the US Patent and Trade mark Office (USPTO), Jenner applied to register the mark KYLIE for “advertising services” and “endorsement services” with the USPTO. Minogue’s representatives entered an opposition to this application in early 2016, arguing that Minogue, who has been in the entertainment business since 1979, has not only historical evidence of her use of the mark KYLIE citing that Minogue is an “internationally renowned performing artist, humanitarian, and breast cancer activist, Kylie Minogue, known worldwide simply as “Kylie.””.
In comparison, Minogue’s representatives cite Jenner as “a secondary reality television personality who appeared on the television series “Keeping Up With the Kardashians” as a supporting character”. Stating that Jenner’s use of the mark KYLIE would not only dilute the earlier rights owned by Minogue, but could cause confusion on the part of the public which would be detrimental to the reputation of Minogue and her brands. This is supported by the concern shown over some of Jenner’s controversial social media posts which have drawn criticism from the disability rights and African-American communities which could mean that any confusion between Minogue and Jenner could damage Minogue’s reputation particularly in connection with her humanitarian work.
It appears that Kylie Minogue and Kylie Jenner have reached a settlement agreement as Minogue has withdrawn her opposition, allowing Jenner’s application to proceed to registration. Although details of the settlement are unknown, this is an example where the ownership of a monopoly right such as a trade mark can be used to secure a commercially viable settlement rather than escalating the situation, thereby reducing the time expended as well as the costs incurred in conducting a full opposition. Remember, the owner of earlier registered rights will often have the upper hand when it comes to such negotiations.
This case illustrates the importance of obtaining trade mark protection for any mark you may use in the course of trade, especially where you believe that anyone else’s use of the mark could have a detrimental effect on the reputation you have built in the mark.
As the trade mark system in the UK and EU is a first to file system, please do not hesitate to get in touch with one of our trade mark specialists on 01392 210700 or email ip.it@stephens-scown.co.uk.