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Trade marks – the importance of watching what others are doing

For those born in the 80s and 90s, the name ‘Kylie’ will inevitably conjure up images of the Australian actress and singer, Kylie Minogue.

For that generation’s children however, the name is more likely to be associated with Kylie Jenner, American reality TV “star” and half-sister to the seemingly-ubiquitous Kardashian siblings.

Some two years ago, Ms Jenner applied to register ‘Kylie’ as a trade mark in the United States in relation to advertising and endorsement services (and, more recently, relating to a variety of fashion and beauty products).

The application was identified by Ms Minogue’s legal team, and an opposition was filed on the grounds of confusion and potential damage to the Australian star’s reputation. The battle heated up somewhat when the opposition described Ms Jenner as a “secondary reality television personality”, as opposed to Ms Minogue’s reputation as an “internationally renowned performing artist, humanitarian and breast cancer activist”.

To cut a rather long story short, the parties eventually settled the dispute and Ms Jenner was permitted to register ‘Kylie’  co-existing alongside Ms Minogue’s portfolio of Kylie-related trade marks. Quite how much money changed hands, if any, has never been disclosed.

The important element of this case was the fact Ms Minogue’s legal team discovered Ms Jenner’s trade mark application at a relatively early stage, and were able to take appropriate action to protect her brand and reputation. If they had not, they would have faced an uphill battle.

Noticing what others are doing in your industry is not a precise science and, to a certain extent, is reliant on an element of good fortune. There is, thankfully, a more comprehensive option you may wish to consider.

Whether you have registered your trading name(s) and logo(s) as trade marks in the UK, the EU and beyond or not, you need to be aware when somebody is infringing your registered or unregistered trade mark rights before you can take action. And the earlier you find out, the greater range of options you have.

Therefore, you may wish to consider a formal trade mark watching service which would allow you to  choose which name(s)/logo(s) you want to monitor, in which industry sectors, and in which countries. You would then receive pro-active notifications of any new third party trade mark applications that fall within the parameters you set at an early stage, thus maximising your ability to protect your brand.

If your house fell down, having an insurance policy is only half the story – you’d actually have to make a claim against your insurer in order to receive any benefit. The same goes for branding – having a strong brand or a registered trade mark is great … but unless you make a claim and enforce your rights, you’ll quickly find your brand being diluted by others who attempt to trade with similar brands.

It is unlikely that Ms Minogue’s legal team discovered Ms Jenner’s trade mark application by chance – it is far more likely that they were ‘watching’ for any Kylie-related trade marks anywhere in the world. Subsequently, they would have been aware  as soon as Ms Jenner filed her application in the US, enabling Ms Minogue’s legal team to act quickly to protect their client’s interests.

If you are interested in exploring this service, then we have a limited-time offer of a three-month free trial. There are some terms and conditions, of course, but it will offer you a flavour of the benefits of the service before you decide whether to opt into the ‘paid-for’ service.  We can’t forecast what information you’ll receive during that three-month period, but we can offer the comfort that your trade marks will be afforded a more comprehensive degree of protection.

 

These notes have been prepared for the purpose of an article only. They should not be regarded as a substitute for taking legal advice.