Kylie v Kylie - The View From An IP Lawyer

Kylie v Kylie - The View From An IP Lawyer

In the Summer of 2015, Kylie Jenner moved to register the trademark 'Kylie' with the US Patent and Trademark Office (USPTO) for advertising and endorsement services - undoubtedly looking to capitalise on the success of the hit US TV show "Keeping Up With The Kardashians". However, Kylie Minogue filed an opposition to this in February 2016, arguing that Jenner's mark would dilute her brand and cause confusion amongst consumers.

The world famous Australian pop-star did not stop there. The opposition referred to Jenner as a "secondary reality television personality" and a "supporting character" on her family's TV show - Keeping Up With The Kardashians. She also took to Twitter to say "Hello...My name is KYLIE". Also in the opposition, Minogue cited trademarks already registered by her for the term 'Kylie' which cover entertainment services and music recordings.

Not to be distracted by Minogue's opposition and indirect digs, a day after the opposition was filed Jenner filed another application for the term 'Kylie' for entertainment services.

However, the matter appears to have come to a conclusion as Minogue withdrew her opposition in January 2017 meaning that Jenner is free to continue with her application. This would suggest that the parties agreed to a settlement. Although the terms of any agreement will be kept confidential, it is likely to have included an agreement that both Minogue and Jenner can use the term in certain circumstances and possibly with a monetary contribution to the other party.

This was an interesting battle as those of a certain generation would argue without reservation that Minogue has a stronger reputation and that the use of the term 'Kylie' can only be in reference to her. However, the younger generation would likely familiarise themselves with Jenner if they used or heard that same term. In considering whether to grant any application made by Jenner, the USPTO would need to consider both Kylie's ability to evidence the public's association of their names with a particular set of goods or services. From a legal perspective, it is a shame that the opposition has been withdrawn, as the ability of both Kylie's to evidence brand recognition and the exclusive right to use the word 'Kylie' would have been an interesting argument to have played out before the USPTO.

Wayne Beynon is an IP lawyer at Cardiff and London based law firm Capital Law.


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