We all love the idea of a celebrity trade mark dispute of titanic proportions – a veritable clash of the Kylies. The reality of what has gone down in the last few weeks (despite recent reports in mainstream media) is very different.
Better the Devil You Know – The devil is in the detail
The first point to note is that there are two completely separate sets of trade mark applications at issue here.
First, we have Kylie Jenner’s trade mark applications for: (1) “KYLIE” (no. 86584742 in class 35); (2) “KYLIE” (no. 86584756 in classes 41 and 45); and (3) “KYLIE COSMETICS” (no. 86755582 in class 3) (the “KYLIE/KYLE COSMETICS Applications”).
Second, we have Kylie Jenner’s trade mark application for: (1) “KYLIE JENNER” (no. 86810719 in class 25). (the “KYLIE JENNER Application”).
Trade mark ‘classes’ are basically the categories of goods or services in respect of which a trade mark is registered (e.g. class 3 includes cosmetics, class 25 includes clothing, class 35 includes advertising and promotion etc. etc.).
Get Outta My Way – The Minogue opposition
The second point to note is that neither Kylie has ‘beaten’ the other in any meaningful sense.
With the KYLIE/KYLIE COSMETICS Applications, Kylie Minogue originally did oppose Kylie Jenner’s trade applications. The former Kylie’s lawyers threw all sorts of shade in their opposition documentation and left the media salivating with excitement.
The lawyers argued that Kylie Jenner was a secondary reality television personality who had received criticism from disability rights groups and African-American communities and, accordingly, any association between Kylie Minogue and Kylie Jenner in the minds of consumers would result in the dilution and tarnishment of Kylie Minogue’s brand and reputation.
The lawyers also argued that there would be confusion in the minds of consumers between Kylie Jenner’s new trade marks and Kylie Minogue’s existing trade marks (including “KYLIE MINOGUE DARLING”, “LUCKY – THE KYLIE MINOGUE MUSICAL” and “KYLIE MINOGUE”).
Ultimately, however, the dispute regarding the KYLIE/KYLIE COSMETICS Applications was settled (i.e. not decided ether way). Kylie Minogue withdrew her oppositions on 19 January 2017 and it is likely that the parties entered into a private contractual coexistence arrangement.
Never Too Late – Jenner’s not finished yet
With the KYLIE JENNER Application, the United States Patent and Trade Mark Office (“USPTO”) objected to the registration of the trade mark on the basis that it was confusingly similar to an existing trade mark registration for “KYLEE” (no. 4166624 in class 25). The “KYLEE” trade mark is owned by Mimo Clothing Corporation. Kylie Minogue was not involved at all and, in any event, Kylie Jenner’s lawyers have appealed against the objection raised by the USPTO so the matter is not over yet.
Can’t Get You Out of My Head – Points to take away
A few points to take away from the “KYLIE” trade mark saga –
First, trade marks are valuable. The value of a trade mark cannot be stressed enough. A trade mark is the legal mechanism by which the value in a brand is protected. Various categories of ‘brand identifiers’ may be protectable by means of a trade mark including words, phrases, slogans, logos, images, shapes and even sounds. If you haven’t already done so, you should consider spending some time with an experienced trade mark advisor, assessing your current level of brand protection, and identifying the ways in which the value in your brand might be enhanced by expanding your trade mark portfolio.
Second, expect and respond to infringement. If Kylie Minogue had not taken any action, Kylie Jenner’s trade marks may have been registered without an examiner or any other third party raising any issues. In other words, the onus is on trade mark owners to assert their rights. For this reason, it is worth having a trade mark watching service in place to help identify potentially problematic trade mark applications in good time and to avoid missing opposition deadlines. Where problems are identified, it is generally better to take advice/action as early as possible.
Third, consider the settlement option. Trade mark opposition proceedings can be expensive and time consuming. For that reason, it is always worth at least considering whether there are any circumstances under which both trade marks may be able to coexistence, or whether any other settlement arrangement may be possible. A carefully crafted coexistence or settlement agreement is often the silver bullet that address both parties’ commercial concerns while avoid the cost and time associated with litigation.
Briffa lawyers advise on all aspects of intellectual property law and practice (contentious and non-contentious matters), including advising on trade mark filing strategy, trade mark portfolio management, and dealing with trade mark oppositions, infringements and other disputes. If you would like to have an initial discussion (without any charge or any obligation to instruct us), please do get in touch.