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What’s in a Name?

What’s in a Name?

30th June 2016

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Everybody loves a bit of celebrity gossip.

Celebrity and entertainment news enthusiasts are atwitter about the current tussle between Australian pop icon Kylie Minogue and perhaps slightly infamous Kylie Jenner regarding trade mark rights in the name KYLIE. Kylie Jenner has filed applications to register KYLIE as a trade mark in the United States in relation to advertising and entertainment services. As is customary with celebrity disagreements, the mud-slinging has begun and Kylie the pop star’s lawyers, in their papers filed in support of the opposition against Jenner’s trade mark applications, have described Jenner as “a secondary reality television personality” and have categorised her role in the enormously popular reality TV show, Keeping up with the Kardashians, as that of a mere “supporting character” (ouch).

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Minogue’s lawyers have gone on to argue that in view of their client’s reputation as an “internationally renowned performing artist, humanitarian and breast cancer activist” if Jenner is allowed to register KYLIE as a trade mark, their client’s reputation and selling power will suffer, as people could confuse the two Kylies. It is not difficult to see where they’re coming from, particularly in light of Jenner’s somewhat dubious reputation for making socially and racially inappropriate comments on social media and in other public forums.

This dispute raises two interesting questions in the context of South African law. Firstly, can you register a person’s name as a trade mark? And secondly, what if the KYLIE dispute had to come before the South African courts?

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In considering the first question, it is universally accepted that the function of a trade mark is to distinguish the goods or services of one person from the same or similar goods or services offered by another person. It naturally follows then, that in order to qualify for registration, a trade mark must be distinctive in relation to the goods or services in question. More simply put, the trade mark cannot consist purely of descriptive or common / colloquial terms or terms that are deemed to be reasonably required for use by traders in a particular industry. There is an exception to this general rule, though, and that is that registration of a trade mark that would normally not qualify for registration on the basis that it is not distinctive may be allowed where the trade mark in question can be shown to have acquired a secondary meaning, and that has consequently become distinctive, as a result of extensive use in relation to particular goods or services.

The issue of whether or not a trade mark is sufficiently distinctive to qualify for registration can become tricky in the context of peoples’ names as surely a person cannot be prevented from doing business under his or her own name. Although the current Trade Marks Act does not contain any specific provisions relating to the registrability of names, it is generally accepted in South Africa that an ordinary common surname is, on the face of it, non-distinctive. A common surname can, however, qualify for registration as a trade mark if it can be shown to possess the necessary distinctiveness as a result of extensive use. Surnames that are not common can more easily qualify for registration.

It is submitted that similar principles would be applicable to first names. Bearing in mind the function of a trade mark one can see that it would be difficult to argue that a common name like “John” can, inherently, function as a trade mark. In the case of such a common name it is unlikely that even extensive use would assist in persuading the authorities that the name qualifies for registration as a trade mark, unless it is in a distinctive logo form. On the face of it, KYLIE does not seem to be a common first name in South Africa and it could therefore be argued that it is distinctive enough to qualify for registration as a trade mark in relation to entertainment services and possibly also certain goods.

On the other hand it is arguable that unusual first names on their own may qualify for registration and in such cases the normal principles applicable in determining whether a trade mark possesses a sufficient level of distinctiveness to qualify for registration, either inherently or as a result of use, would apply.

It is also necessary to bear in mind that trade marks are territorial in nature and a name that is common in one jurisdiction may not be common in another and may therefore qualify for registration as a trade mark.
So if Kylie (whether it be Minogue or Jenner) applied to register KYLIE as a trade mark in South Africa, would she be successful? Applying the principles set out above, in my view it certainly seems possible.

Turning to the second question, what if the current dispute between the two Kylies had to come before a South African court? The current Trade Marks Act makes provision for a trade mark application to be opposed on the basis that it constitutes a reproduction, imitation or translation of a well-known trade mark that is sought be to be registered in respect of goods or services that are the same as or similar to the goods or services in respect of which the trade mark is well known and where use is likely to cause deception or confusion.

These provisions in the Trade Marks Act were enacted specifically to cater for the protection of trade marks that are internationally well-known but which enjoy no registered protection or goodwill in South Africa. Just to give some context, the provisions were introduced primarily to ensure that South Africa complies with its obligations under the Paris Convention.

It seems most likely that Kylie Minogue would have to use these provisions as a basis for any opposition to the registration of KYLIE as a trade mark by Kylie Jenner in South Africa, and applying the principles that have been developed in South African cases dealing with the so called “well-known” provisions, Kylie (Minogue) would have to show that KYLIE is well-known amongst a substantial number of people in South Africa as being her name and trade mark. This doesn’t necessarily mean that the trade mark must be well-known among a substantial number of people across the population of this country, but it would need to be shown to be well-known amongst a substantial number of consumers of the relevant goods or services.

It is unlikely that the South African courts will be called upon to adjudicate this particular dispute as South Africa is probably not likely to be a jurisdiction of enormous importance to either of the Kylies, but it would be interesting to see what the outcome would be if it did, particularly in view of the growing reality TV culture globally and in South Africa and whether Kylie (Minogue) is able to show that her assessment of Kylie (Jenner) being merely a “secondary reality television personality” is correct and that her reputation in the KYLIE trade mark far exceeds that of Kylie Jenner and is substantial enough in South Africa to make it likely that use of KYLIE by Kylie Jenner would cause confusion in  the minds of the public.

These factual questions could be answered by way of a properly conducted survey in amongst South Africans who watch or follow TV and such show business personalities.

Written by Vicky Stilwell, Trade Mark Attorney and Consultant, KISCH IP

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