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The Battle of the Kylies - part 2

The Battle of the Kylies - part 2

February 9, 2017 12:46 PM | Posted by Dutkowski, Rebecca | Print this page

 In our previous blog post, we had reported that in a battle for the name KYLIE, Kylie Minogue had opposed a US trade mark application for "KYLIE" by Kylie Jenner, of "Keeping up the with the Kardashians" fame/infamy. The opposition filed included descriptions by Ms Minogue's lawyers of Ms Jenner as a "secondary reality television personality" known for her "photographic exhibitionism" and "controversial posts".

As previously discussed, Ms Jenner had also filed trade mark applications for KYLIE in Australia, although they were yet to be open to opposition.

When looking at the two countries, the strength of each Kylie's positions differed between the US and Australia. In Australia, "our Kylie" has a number of trade marks for or containing KYLIE that include a broad range of goods and services. In the US, Ms Minogue's trade marks are in a more limited number of classes, with no earlier filed trade mark for KYLIE for the services contained in Ms Jenner's applications, being advertising and endorsement services. Ms Minogue's reputation, which is relevant to certain grounds of opposition in both Australia and the US, would be expected to more easily established in Australia than in the US, to reflect the level of fame she attracts in each country.

A year after it started, the US Kylie litigation has ended without any further disparaging comments from either side. In documents filed with the USPTO, Ms Minogue has withdrawn her opposition of Ms Jenner's trade mark application. It appears that the two Kylies have come to an agreement regarding their respective geographical claims to KYLIE, with Ms Jenner withdrawing two previously filed Australian trade mark applications for KYLIE and KYLIE COSMETICS.

The battle between these Kylies appears over although any other Kylies who wish to use their first name as a trade mark should take note that KYLIE is a fiercely guarded mark.