Trade marks are trending with celebrities – and they are keen to pursue protection in Australia:
- Paris Hilton tried unsuccessfully for many years to register THAT’S HOT in respect of classes 3, 4, 14 and 25 (1039210, 1184612, 1281365);
- Curtis Jackson (aka 50 Cent) lodged a convention application for his stylised Australian trade mark for 50 Cent in 2003 in relation to classes 9, 25 and 41 (949000); and,
- Donald J. Trump, President of the USA, has 7 trademarks in Australia including 4 directed to the wordmark TRUMP (1137970, 1239747 (expired – renewal possible), 1433269, 1486784) in classes ranging from real estate services (36) to provision of golfing facilities (41).
Indeed, according to the Harvard Business Review, licensing brings in billions in revenue for the largest global licensors.
The Kardashians – one of the most successful TV reality families of all time – are no stranger to trade marking and licensing arrangements. In Australia alone, Kimsaprincess Inc (Kim Kardashian’s company) is the owner of 12 registered marks including KIM KARDASHIAN, DASHING, KIMOJI relating to goods and services from fragrance (3) to wireless electronic transmission of graphics (38). Sisters Khloe (KhloMoney) and Kourtney (2Die4Kourt) also have various marks, as do Kylie (Kylie Jenner, Inc.) and Kendall Jenner (Kendall Jenner, Inc.).
But what can be gleaned from the Kardashian Australian trade mark filings? The following examines three takeaways framed by the Kardashian case study.
1. Consequences of joint ownership
KARDASHIAN KOLLECTION and KARDASHIAN ESSENTIALS are jointly owned marks by Kimsaprincess, KhloMoney and 2Die4Kourt. KENDALL + KYLIE is owned by Kendall Jenner and Kylie Jenner. Therefore – each of these marks is jointly owned.
Section 28 of the Trade Marks Act 1995 states that if 2 or more persons interested in a trade mark are not entitled to use, except on behalf of all of them or in relation to goods and/or services with which all of them are connected in the course of trade; then an application for joint ownership may be made under subsection 27(1). This means that an application can only be made if neither of the parties can exploit the mark alone – you are essentially a single person – and can only do so on behalf of all of them, and in relation to goods/services which they are all connected.
For the Kardashian marks – such as KARDASHIAN ESSENTIALS – to be entitled for use this must benefit all within the joint ownership and in this case be in relation to classes 9 and 25 (eyewear, hoistery or shapewear). For licensing or assignment – they all have to provide consent (this could be important for merchandising, distribution, etc)
Key takeaway – carefully consider the consequences of joint ownership of trade marks before entering into this type of arrangement – speak to a professional.
2. Registrability of a Name
Section 41 of the Trade Marks Act 1995 requires an application be rejected if it has no inherent capability to distinguish to goods or services for which the application is sought. Kimsaprincess Inc is the current owner of mark KIM KARDASHIAN – a first and surname. Kim also has registered protection for her initials KKW. Both marks are in relation to class 3 (including fragrances). In terms of whether a surname, name or initials have inherent capability to distinguish, IP Australia’s Examiner’s Manual offers some guidance. For surnames only – the commonness of the surname is used as an indicator for its inherent adaptation to distinguish. The addition of a first name and surname increases the likelihood it is capable of distinguishing the goods or services – unless the name as a whole is common (JOHN SMITH) and the goods and services are common
Key takeaway: to register a mark it must be inherently capable of distinguishing the goods or services. It is possible to register a name – but less likely the more common the name is.
3. Conflicting Marks
Section 44 of the Trade Marks Act 1995 states that an application must be rejected if the applicant’s mark is substantially identical or deceptively similar to a mark registered by another person in respect of similar goods or closely related services. Kylie Jenner attempted to register the marks KYLIE and KYLIE COSMETICS via Convention applications lodged in September 2015 and February 2016 respectively.
KYLIE stipulated classes 35 and 41 (advertising services and entertainment), and KYLIE COSMETICS was applied for in respect of goods and services in classes 3 and 35 (cosmetics and retail stores featuring cosmetics and beauty products). According to IP Australia, these applications were eventually withdrawn after the issuance of adverse examination reports. While details of the adverse reports issued have not been obtained, a search of the register does reveal the trade mark KYLIE is registered in respect of classes 3, 4, 9, 14, 16, 25, 28, 41 by Kylie Minogue (KDB Pty Ltd). Whether these existing KYLIE marks blocked the registration of Kylie Jenner’s marks or not is up for speculation. But – this does highlight the importance of conducting clearance searches prior to incurring the cost of filing a trade mark application – only to find an existing mark on the Register is blocking your registration.
Key takeaway: Conduct clearance searches of the same and similar mark in the same and closely related classes – as well as using Google, etc. Seek professional advice.