11 September, 2019
In April 2015, reality star Kylie Jenner made an official attempt to register the mark 'Kylie' in the United States for the purposes of advertising and endorsement. This move was to trigger significant opposition from Kylie Minogue, the Australian singer/actress, and subsequently lead to a heated trade mark debate that would result in a victory for Minogue and her business entity.
Kylie Jenner's trademark registration was initially blocked by the Minogue team in February 2016, with a further two opposition filings occurring in June and October of the same year. Put into the context of the World Intellectual Property Organization NICE Classification, Kylie Minogue's legal team were opposing the use of the word 'Kylie' in classes 35, 41 and 45, along with the use of the term 'Kylie Cosmetics' in class 3. Justification for this opposition centred around the belief that the term 'Kylie' was widely related to Minogue herself, and that any association with Kylie Jenner, who had been subject to recent controversy surrounding social media posts, would consequently tarnish the reputation of Minogue who had herself undertaken vast humanitarian activities. It was also argued that Jenner's new trademark registrations would collide and cause confusion with Minogue's already-established marks 'Kylie Minogue Darling' and 'Kylie Minogue.'
Fast forward to January 2017, and after a year of intense conflict, the dispute between the two Kylies seemed to have reached a settlement. Minogue withdrew her opposition to Jenner's application, and with settlement terms remaining strictly confidential, it is likely that both parties entered into a co-existence agreement. A co-existence agreement is a simple agreement between two parties that allows both owners to use their similar marks, but setting out agreed parameters and limitations to their usage, a useful tool and alternative to litigation. Whilst Jenner was allowed to continue the application for her trade mark registration to expand her make up range 'Kylie Cosmetics', the announcement in the summer of 2019 of Kylie Minogue's latest beauty endeavour, branded 'Kylie', suggests that the settlement favoured the Aussie sensation.
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