Keeping Up With The Kylies

Doing the locomotion to Kylie in 1986 is so far removed from applying the nail varnish Wear Something SPAR-Kylie in 2016. Which Kylie does the locomotion and which Kylie offers nail varnish? Is it Kylie Minogue or Kylie Jenner? That is the problem that the US Patent and Trade Marks Office (USPTO) now faces because Kylie Minogue (pop Kylie) has filed a Notice of Opposition to Kylie Jenner’s (reality Kylie) attempts to trade mark variations of her name Kylie in the battle of Kylie vs Kylie.

“What’s in a name?” one can ask… The Notice of Opposition filed by pop Kylie has listed the many ways in which her variations of the name KYLIE have been trade marked since 2003 and the many products produced by her. Her trade marks allegedly cover musical recordings, clothing, wallets, wristwatches, perfumes, body oil, essential oils, skin moisturizers, candles, bubble bath, bath salts, hand soap, hair gels, hairsprays and hair colours.

On the other hand, reality Kylie is seeking protection for the term KYLIE in connection with entertainment services. The application was published for opposition in August last year.

In opposing the application pop Kylie has claimed that if the USPTO approved reality Kylie’s application it would cause confusion amongst consumers between the two Kylies and dilute pop Kylie’s brand. In the opposing papers pop Kylie said that reality Kylie is a “secondary reality television personality”. This statement surely shows that pop Kylie hasn’t really been keeping up with the Kardashians, now has she?

So, who should own the name Kylie?

If you start typing Kylie into Google will you first be met with Kylie Minogue or Kylie Jenner?

Pop Kylie has been in the entertainment industry since 1979 and launched her first album “KYLIE” in 1988. Her hit “The Locomotion” went to No. 3 on the Billboard Hot 100 and she won a Grammy for the song “Come Into My World”. She also owns and has sold more than 80 million records.

Reality Kylie is one of the most followed individuals on social media and has brought out new nail varnish named “Wear Something Spar-kylie” and “Rain in the S-kylie”. And of course she stars in the reality series Keeping Up With The Kardashians.

It is open to question as to whether the name or likeness of a famous person can be capable of distinguishing in relation to goods. The merchandise is bought not because it comes from a particular source but simply because it carries the name or likeness of a famous person. It is submitted however that if the person concerned has embarked upon his/her own programme of licensing his/her name or image in relation to goods and through use of the mark has established an extensive character of his/her name or likeness to the mark it will in fact be capable of distinguishing and be registrable as a trade mark.

Pop Kylie has had many years of use of the mark KYLIE and the goods and services that she offers thereunder have become synonymous with the word Kylie. However, should reality Kylie be given the benefit of the trade mark and her own name and the rights attached thereto in relation to the services i.e. entertainment with which she has become associated?

The USPTO has a difficult task before it, considering the notoriety of the two Kylies. We’ll let you know the outcome as soon as we do, in the next episode of Keeping up with the Kylies.

Kim Rademeyer – Partner

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