Australia: Will the real Kylie please stand up? Trade mark opposition put in (loco)motion

Last Updated: 10 March 2016
Article by Hayden Delaney and David Baldwin

At some stage or another, we have all heard someone attest to the value of having a good name. This is especially true for businesses and celebrities, whose names convey or carry a specific, brand, image or reputation.

What happens when you wish, as a business or individual, to capitalise on your name and associated brand? You need to take care, as the youngest member of the Kardashians, Kylie Jenner, recently discovered when her application in the U.S. for the trade mark of her name 'KYLIE', was opposed by Australia's very own Kylie, Kylie Minogue.

Kylie vs. Kylie

In May 2015, Ms Jenner, through her company Kylie Jenner Inc, applied for a trademark in the United States for the word 'KYLIE', under trade mark class 35, which covers advertising services, including advertising brands, goods and the services of others and endorsing/promoting the goods and services of others.

A Notice of Opposition was filed on 22 February 2016 by KDB Pty Ltd (KDB), an Australian based company representing Kylie Minogue on the basis that to allow the registration of Ms Jenner's application would cause confusion, dilution and that the following trade marks owned by KDB, were filed and used first by KDB:

  • The plain word 'KYLIE MINOGUE DARLING' in class 3 for use in relation to fragrance and cosmetic products;
  • The plain word 'KYLIE' in class 41 for use in relation to education and entertainment purposes;
  • The plain word 'KYLIE' in class 9 for music recordings, including pre-recorded optical discs featuring video clips; and
  • The plain word 'KYLIE' in class 28 for use in relation to Jewellery, bracelets, necklaces and the like.

Additionally, KDB highlighted its ownership of the domain name, and tellingly, even asserted that Ms Jenner is a 'secondary reality television personality'.

The Notice of Opposition highlights some important realities that all businesses need to understand and consider in relation to trade marks for both goods and services.

Registration of a business or corporate name

In Australia, whilst the incorporation of a company or the registration of a business name on the Business Names Register provides evidence of the existence of the business/corporate entity, the name under which the entity trades is not adequately protected and as a result, the business has no right to act to prevent the use and infringement of that name by another business, or worse, to use the name of their own business, if that same use would result in an infringement of an existing trade mark.

It is therefore crucial that businesses understand the distinction between business or company names and the proprietary ownership of the intellectual property rights pursuant to a validly registered trade mark, given the importance of maintaining a well-known name and brand that people cannot get out of their head.

The exclusive rights of a trade mark owner

Ultimately, most successful businesses trade off their brands and the developed reputation that they carry, but too often, as appears to be the case with KDB, businesses fail to turn their minds to the full scope of current and future goods services that the business will provide and file the registration of relevant trade marks accordingly.

What would happen in Australia?

In Australia, a trade mark application will be accepted where the applicant for the trade mark is able to demonstrate that their goods or services are sufficiently distinguishable from the goods or services of others, in relation to the class of goods and services, of which there are 45, in which the trade mark seeks registration.

In the above circumstances, Ms Jenner would need to demonstrate that her application for the trade mark of her name 'KYLIE', for the advertisement and promotion of goods and services, is sufficiently distinguishable from the goods or services of Kylie Minogue and her registered trade marks.

On the face of it, KDB has registered rights for 'KYLIE' for a broad range of goods and services including, education and entertainment and the two trade marks are identical.

But does this mean that Ms Jenner's trade mark application will be rejected?

In Australia, pursuant to section 44 of the Trade Marks Act 1995 (Cth) (the Act), the application would be rejected if the trade marks examiner is satisfied that Ms Jenner's prospective 'KYLIE' trade mark is substantially identical with or deceptively similar to KDB's plain word 'KYLIE' trade mark in respect of similar goods or closely related services, or similar services or closely related goods. Ultimately, filing in a different class is not a guarantee that a proposed trade mark will not fall within the test outlined in section 44.

If an examiner were to accept the application, it would be then incumbent upon Ms Minogue to oppose the application, which would likely include a ground of opposition under section 58 of the Act. That ground involves the application of the narrower test than section 44 of the Act – namely that the use must be in relation to goods or services that are "the same kind of thing" or "essentially the same" (see Colorado Group Limited v Strandbags Group Pty Limited (2007) FCAFC 184). The success of that ground of opposition would turn on the evidence.

Time will tell whether Ms Minogue should be so lucky, but the lesson for businesses and individuals is clear.

Businesses need to:

  • Undertake necessary due diligence before filing an application for registration of a trade mark in order to determine whether there are any conflicts;
  • When filing an application for the registration of trade mark, ensure that you file in all of the correct classes, adequately describing the goods and services that your business provides, both now and in the near future; and
  • Give careful consideration to the future goods and services that your business may provide and seek registration in those classes at the time of filing to ensure that your trade mark rights are adequately protected, in classes that you will likely use in the future.
  • However, this needs to be considered in light of the non-use provisions contained within Part 9 of the Act require a trade mark owner use their registered mark and do so in good faith, failing which an application for removal of the mark can be made, providing a period of 5 years has passed since the original date of application for registration of the trade mark. In certain circumstances, "defensive" trade mark applications can be made to avoid the risks of a non-use application.

Whilst some business may successfully navigate the arrival of a competitor with a similar name or brand, or even a change in name, as demonstrated by artists like Prince, whose name could not be verified at the time of writing, others may not and it is advisable that this situation be avoided completely by adopting the above steps at the inception of a venture or as early as possible, to protect their good name and brand.

© HopgoodGanim Lawyers

Award-winning law firm HopgoodGanim offers commercially-focused advice, coupled with reliable and responsive service, to clients throughout Australia and across international borders.

2015 AFR Beaton Client Choice Awards:
Best Law Firm (revenue $50m - $200m)
Best Professional Services Firm (revenue $50m - $200m)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions