Why? What? When? How? These are some of the most used words in John’s dictionary. He’s pretty curious about the workings behind what happens in his life, and many of those have to do with the inventions and the workings of intellectual property in the world around him.
Trademarks allow people and organizations to promote and sell their products under a recognizable brand. John knows we interact with plenty of brands in our daily life, but he recently came across a case which gave rise to a lot of questions. IP Geek answers.
Hello IP Geek- I had a question for you.
Do you know about the infamous trademark battle over “Kylie” between Kylie Jenner and Kylie Minogue? I heard Minogue won the dispute and owns “Kylie” now.
I didn’t even know that names could be trademarked. Plus, how did Jenner, who is such an influential figure, lose this dispute?
Hi John! Celebrities often trademark their names for advertisement, endorsement and other commercial purposes. Such marks are often called Selfmarks.
They promote and sell products better, since a direct, emotional connection is made between the celebrity and the product.
In this case, despite both parties being famous, Minogue won the dispute on the grounds of prior use.
Minogue established that she was the prior user of “Kylie” since 1979, when she titled her album “Kylie”. Her website, kylie.com, has been running since 1996. Ms. Minogue, has been using her selfmark continuously and without interruption for more than three decades now.
In contrast, Jenner only started using her mark in 2017.
What would have happened had Kylie Jenner used “Kylie” in spite of the opposition from Minogue?
Unauthorized and illegal use of somebody’s trademarked selfmark would have the same impact as that of any ordinary trademark infringement.
With her extensive prior usage, Kylie Minogue proved that she was the undisputed prior owner. If Jenner had continued using that name she would have been liable for infringement and would have to pay Minogue damages for the loss.
In the end, the two parties did reach a settlement, with Jenner agreeing to use “Kylie Cosmetics” instead of just “Kylie”.
Can any unique name be trademarked? By trademarking their names what do these celebrities actually achieve?
It is important to remember that not every name can be trademarked.
The mark has to have some distinct popularity of its own and has some goodwill associated with the owner. In other words, they can be registered if they satisfy the ordinary trademark requirements of distinguishability and distinctiveness. Of course, this is under US Law.
In India, the provisions are different, and getting exclusive trademarks for names is more difficult.
That’s interesting! Now I have a better idea of the role personal names play in trademarks, and I can definitely see how personal brands are important in today’s world. Thanks IP Geek!
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