Kylie, Berghain and the limits of a good pun

I’m Cassine, one of Briffa’s associates … and our resident DJ.

I was scrolling social media when I came across a story I couldn’t resist – A DJ act receiving a trade mark cease and desist letter. This is my area of expertise after all.

Background

A Manchester DJ project, known for its Kylie Minogue dancefloor edits has rebranded after receiving legal correspondence from none other than Berlin’s iconic nightclub, Berghain.

The act had previously been trading under the rather fitting and hilarious name “Kylie Goes Berghain”, assumed to be a nod to both Kylie Minolgue and the nightclub Berghain. They have now rebranded to “Kylie Wears Berghaus”, dropping the Berghain reference entirely.

Whilst we don’t have all the facts, we can make an informed guess as to the basis of Berghain’s complaint:

Trade marks

Nightclubs, like fashion brands and tech companies, can protect their names as registered trade marks. A registered trade mark gives its owner the exclusive right to use that mark in the course of trade for specified goods and services. For night clubs, that often includes entertainment services, live events and merch. Many cover “night club services” specifically.

From a quick look at the trade mark registers, it is clear Berghain has a number of trade marks in the UK and EU covering such goods and services.

Trade mark infringement can arise where a third party uses:

• an identical or similar sign
• for identical or similar goods or services
• resulting in a likelihood of confusion.

In the context of a DJ act performing at venues and nightclubs, the relevant services (live music/club entertainment) are closely aligned with those for which a major nightclub brand would ordinarily hold protection.

Even if no one genuinely believes the Berlin club is hosting the event, the legal test is broader than actual confusion – UK law also catches likelihood of confusion and, where the earlier mark has a reputation, uses that take unfair advantage of, or cause detriment to, that reputation (explained below).

UK and EU trade marks must be used in the territory they have been obtained to remain enforceable. Sometimes, mark holders who have not used their mark in the relevant territory lose their marks due to non-use. While Berghain is not a UK club, it is exceptionally well known amongst UK club‑goers and attracts a substantial UK audience. That level of reputation and cross‑border consumer base is often enough to maintain rights in the UK, despite the club itself being in Berlin.

Reputation and “unfair advantage”

Berghain almost certainly benefits from enhanced protection as a result of its reputation. Some marks – those with a strong cultural or commercial presence – are protected even where there is no confusion, if a third party:

• takes unfair advantage of the mark’s distinctive character or reputation, or
• causes detriment to it.

A DJ name that explicitly incorporates “Berghain” may be seen as riding on the club’s success and reputation – particularly in electronic music circles.

Berghain’s brand is also built on a reputation for seriousness and exclusivity. A playful or satirical use of its name may be argued to dilute or harm that image.

What about parody?

It is tempting to frame this as parody. However, UK trade mark law does not contain a “parody” defence or exception. There is a parody exception when it comes to copyright infringement, however if a brands mark is involved (typically the brand name, logos or other identifiers), trade mark law becomes relevant and parody is no defence to trade mark infringement. The claimant would therefore claim trade mark infringement, not copyright infringement.

Trade mark infringement defences

There are narrow defences to using someone’s trade mark for descriptive use and honest practices (for example, us writing this blog). But using a well‑known venue’s name as part of a commercial act’s branding – especially where tickets are sold and marketing takes place – rarely falls within those exceptions.

The courts generally ask is this use necessary to describe something? Or is it functioning as branding? If it’s branding, the defence becomes harder to sustain.

What about Kylie?

Although not central to the reported dispute, it is worth noting that Kylie Minogue herself is famously protective of her brand. Her long-running trade mark dispute with Kylie Jenner is a reminder that personal names in entertainment can carry significant commercial weight.

It is therefore surprising that Kylie Wears Berghaus has chosen to keep the “Kylie” element of the name and presumably keep producing Kylie edits – this carries a clear copyright infringement risk, and a trade mark infringement angle of its own, should Kylie Minogue or her team choose to act.

While many artists tolerate tribute acts, tolerance is not consent. Using another party’s trade marks or goodwill always carries risk unless properly licensed.

Perhaps a licensing agreement with Kylie is in place, Kylie is a fan or maybe she is unaware or unbothered by the DJ’s use of her name. For now, Kylie Wears Berghaus lives to play another day.