You may have already heard that Australia’s home grown sweetheart, Kylie Minogue, lodged an opposition against Kylie Jenner’s attempt to trade mark the name, “Kylie”. Kylie Minogue has been making headlines around the world since the 80’s and had opposed the US trade mark attempt on the basis that it could damage the Minogue brand and name. There is also potential to confuse the two Kylie’s in advertising.

Jenner filed the trade mark application in April 2015, and Minogue’s opposition is grounded in her status as an international performing artist, breast cancer activist and humanitarian. Minogue has owned the domain name www.kylie.com since August 21, 1996 and has registered “Kylie Minogue” and “Kylie Minogue Darling” as trade marks to distinguish her goods and services such as perfume and sound recordings. 

Minogue claims that she has sold 80 million records and that Jenner is a “secondary reality TV star”. Is this a fair fight? Is this really a case of the importance of timing?

Can you Trade Mark a Name?

We have previously explored in an earlier article whether it is possible to trade mark a name. Trade marks are a proprietary right used to distinguish your business’ goods and services from other traders. As we can see in Minogue’s case, a name can be registered as a trade mark when it is used to distinguish and identify goods and services such as Kylie’s brand, perfume or music.

You may be asking yourself, why is it important or even necessary to your trade mark your name? If your name is an asset to your brand and distinctive (aka not John Smith), you should think about registering. Importantly, consider the intent behind registering your name as a trade mark – are you distinguishing goods or services? 

Timing is Everything

In the case of trade mark registration, the date on which you file your application matters, and it’s important to file as soon as possible to establish a “priority date”. In the case of the two Kylie’s, Minogue’s priority date for the use of “Kylie” was established well before Jenner was even born. Applications that conflict with a registered trade mark may be rejected if they are deceptively similar or substantially identical.  Is this just a case of too bad, so sad for Jenner? Should Jenner move out of Minogue’s way? We’ll have to wait and see.

A Solution?

Minogue has clear reasons for wanting to protect the “Kylie” brand and name to distinguish her goods and services sold under the mark. Unfortunately for Jenner, she came along after the original who had already capitalised on her success as a pop icon. Kylie Jenner may now consider trademarking her full name, including her surname, as this may be a sufficient distinction to mitigate any confusion. If her application is successful, she would be afforded proprietary rights to her full name when used in relation to her goods and services. 

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If you have any questions about protecting your brand, or registering your trade mark, get in touch with our intellectual property lawyers on 1300 544 755. 

Sophie Glover

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