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Kylie and Kylie: trademark ceasefire?

21-03-2017

You may remember the news earlier this year about the trademark battle between Australian popstar Kylie Minogue and reality TV personality Kylie Jenner. In 1996, Kylie Minogue registered several varieties of the trademark KYLIE in the USA. Almost 20 years on, in 2015, Kylie Jenner attempted to trademark her first name in the USA as well. Kylie Minogue opposed. Now, the Kylies seem to have settled.

Comparing the trademarks
When assessing whether marks are confusingly similar, trademark examiners will consider visual, phonetic and conceptual similarity. Their assessment must be based on the overall impression given by the marks, account being taken, in particular, of their distinctive and dominant components. The similarity of the goods/services will also be assessed. If both the marks and the goods/services are similar, it is likely that the relevant public will be confused. The holder of the older trademark will then be able to act against the use and/or registration of the younger mark.

Opposition
In February 2016, Kylie Minogue opposed the trademark application for KYLIE by Kylie Jenner, on the basis of her registrations of the several varieties of the trademark KYLIE. Kylie Minogue’s trademark is registered for a range of goods, including perfume, cosmetics, clothing and toys, while Kylie Jenner wished to trademark KYLIE for advertisement and endorsement related services. According to Minogue, the chance of confusion between the marks would be high.

In Minogue’s notice of opposition it was argued that Minogue is internationally well-known as a music artist, philanthropist and a breast cancer activist. Jenner, however, is described as a secondary reality TV personality who is often criticised. Besides the likelihood of confusion between the marks, the registration of a KYLIE trademark by Kylie Jenner would therefore also be detrimental to the reputation of Kylie Minogue.

Settlement?
In 2016 the proceedings between the Kylies were suspended twice for settlement negotiations. Minogue finally withdrew her objection on 19 January 2017, suggesting that a settlement has been reached between both parties. Neither parties wished to comment about the contents of the settlement. Although the exact arrangement is unclear, it is clear that Kylie Minogue actively enforces her trademarks rights.

If you have questions about the enforcement of your trademark, do not hesitate to contact us.

Dominique Nijssen works in Novagraaf’s Competence Centre in Amsterdam.