Better the devil you know?Print publication
Who do you think of if you hear the name “Kylie”?
We ask this question in the light of an application by Ms Kylie Jenner for registration of the mark KYLIE in the United States. Ms Jenner has applied for the registration in class 35, which covers advertising services, including advertising brands, goods and the services of others and endorsing/promoting the goods and services of others.
Ms Jenner, for those not au fait with these things, features in the American reality TV show, Keeping up with the Kardashians.
The application has been opposed by KDB Pty Ltd (KDB), an Australian-based company which represents Kylie Minogue. KDB maintain that to grant Ms Jenner’s application would cause confusion with, and dilute, the trade marks already registered in the name of KDB, including KYLIE MINOGUE DARLING and KYLIE in various classes, but not class 35. KDB also owns the domain name www.kylie.com. Its opposition is rather dismissive of Ms Jenner, calling her a “secondary reality television personality”.
From a neutral perspective, it would be good to see this dispute run its course, if not for more catty comments from the participants, then at least for an assessment of the likelihood of confusion between the two competing KYLIE marks and whether Ms Minogue’s brand will suffer detriment by virtue of registration of the KYLIE mark in Ms Jenner’s name.
As an aside, it is worth mentioning the “own name” defence in trade mark infringement proceedings. Under the Trade Mark Directive  and the Community Trade Mark Regulation  a trade mark proprietor cannot rely on a registered mark to prevent the use by a third party of their own name – provided they do so in accordance with honest practices in industrial and commercial matters – which, of course, has been the subject of some interesting case law. The position will change when the new Trade Marks Directive  comes into effect as the defence will be narrowed so that it will be available to natural persons only.
We will keep you updated with developments in this dispute between the two Kylies.
 Directive 89/104/EC
 Council Regulation (EC) No 207/2009
 Directive (EU) 2015/2436