In brief 3 min read
For a celebrity, your name is your business. It is no surprise then that celebrities will go to great lengths to protect their brand. This is clear from a recent flurry of A-list trade mark activity, including by the likes of Kim Kardashian West, Kylie Jenner and Beyoncé. The key message in each case is the importance of careful consideration before registering a trade mark, including awareness of the challenges that might be involved in the process.
- To be registered, a trade mark must be capable of distinguishing your product or service. This means there is a limit on the extent to which commonly used phrases can be registered as a trade mark.
- Undertaking clearance searches before filing your trade mark application may help prevent unexpected delays or oppositions to your application.
- While squaring off against star power in a trade mark dispute may seem like an uphill battle, it should not be assumed that celebrities can have a monopoly over their names in connection with all goods and services.
Kim Kardashian West moved to defend her US registered trade mark for her famous initials, 'KKW', by filing an opposition against a third party application, also for 'KKW'. While Kardashian's mark predominantly covers the goods available from her line of cosmetics, the third party application covered goods such as headphones, cases for mobile phones and sunglasses. Kardashian argued that because she uses the KKW brand for similar goods, such as sunglasses, this would cause confusion for consumers. The third party applicant failed to respond to the opposition and the application is now 'abandoned'.
Kylie Jenner is also making trade mark news, after a clip of her singing the phrase 'rise and shine' to her daughter went viral. Jenner capitalised by selling merchandise featuring the phrase, and filing applications for trade marks over 'Rise and Shine' for cosmetics, as well as both 'Rise and Shine' and 'Riiise and Shiiinnee' for clothing and other accessories. The fact a phrase is commonly used is not in and of itself a bar to registration, but it remains to be seen whether Jenner's applications will succeed. Rest assured, you can still sing 'rise and shine' to your children if the marks proceed to registration.
Moving away from the Kardashians and Jenners but sticking with the theme of daughters, Beyoncé applied to register the name of her daughter 'Blue Ivy Carter' as a trade mark for goods such as cosmetics, electronic devices, bags, baby bedding, music and entertainment services. The application was filed in January 2016 but has not yet been registered. 'Blue Ivy' has previously been registered to Boston-based wedding planning business Blue Ivy Events.
These tales serve to highlight some of the issues non-celebrities will also face in pursuit of brand protection.
- For a trade mark to be successfully registered, it must be capable of distinguishing your goods or services. It cannot be substantially identical with, or deceptively similar to, a registered trade mark for similar goods or services, and the trade mark's use in relation to the goods or services cannot be likely to deceive or cause confusion. While the usual tip is to try to go with distinctive or unique branding for your chosen goods and services, this advice is not overly helpful if you are hoping to trade mark a person's name or initials, or capitalise on a clip that has already gone viral. At that point, it is a bit late to try to rebrand!
- Our tip: always undertake a clearance search before adopting a brand or proceeding with a trade mark application. Also keep in mind that trade marks are registered for particular goods and services, so even if a name (no matter how famous) is associated with a certain type of goods or services, this does not necessarily mean that no one else can use it for other goods or services.