When it comes to trademarks, you can never take for granted the fact that no-one will attempt to steal your brand. In this article, BINH REY explains the importance trademarks play in protecting your brand.
While the notion of someone ‘stealing your brand’ may sound a bit extreme and maybe even unrealistic to someone who runs a small business, it’s a very real threat and one that you should seek protection from as soon as possible.
Very recently there was a legal case in the USA where Kylie Jenner (of Kardashians fame) applied to trademark the name ‘Kylie’ in several different classes. Following that application, a notice of opposition was quickly filed by Kylie Minogue’s legal team.
It appears that while Kylie Minogue owns several trademarks associated with her name, including her full name ‘Kylie Minogue’, she neglected to trademark her first name ‘Kylie’ – which left the door open for Kylie Jenner.
At the time of writing this article, the case appears to have been resolved in favour of Kylie Minogue, although Kylie Jenner still has the right to appeal that decision. The case has been running for over a year so far, which is typical for trademark application objections.
Whether the matter will ever be fully resolved is anyone’s guess, but in the meantime, there are several lessons you can take from Kylie vs Kylie when thinking about your own trademarks.
First and foremost - don’t wait to submit your trademark application. This is probably the biggest lesson out of this whole case. While it might seem like a non-urgent task or an expensive task for a small business, protecting your IP in Australia for 10 years only costs around 41c per day, much less than a cup of coffee.
Think about everything that you need to protect about your product, service or brand and apply as soon as you can. If there is a dispute, the first party to file their application is usually favoured, although this may not always be the case.
Don’t assume that just because you own similar trademarks that someone else can’t legally get an application approved. At the end of the day, it comes down to the legal cases presented. If your opponent has a good argument, they might just win.
You need to think not only about what you would trademark, e.g. words and names directly associated with your brand, but also consider what others could trademark that is similar but could be detrimental to your brand. Team Minogue had registered ‘Kylie Minogue’ years back, but neglected to trademark just ‘Kylie’ which is where this all began.
Hiring lawyers to fight trademark application disputes – whatever side you’re on – is not cheap. This case lasted just over a year and while some of that time is lapsed time waiting for responses from the United States Patent and Trademark Office, there was still a lot of work that needed to be done on both sides to present and oppose the application. These kind of legal fees could break a small business.
Great businesses are built on strong brands and while many people see trademarking as a way to protect their IP, it’s other main function is to help people differentiate between brands. For example, the ‘double C’ logo owned by Chanel is not just a logo, it’s a symbol of brand luxury in the world of fashion.
Team Minogue opposed the Team Jenner application on the grounds it would dilute the Minogue brand identity, which is cute chick, gold-hotpants-wearing, breast cancer survivor, humanitarian Aussie Kylie, versus Kylie Jenner whom Team Minogue described as a “secondary reality television personality” who has received criticism from disability rights groups and African-American communities.
If you lose a trademark dispute and cannot use the name or image you applied to trademark, then you will incur costs to re-brand that product. Think about the cost, time and effort that it has taken you to get to where you are with your business now and what it would take to have to re-brand, re-package and re-name your products, services, website – not to mention the small things like legal contracts, company stationery, brochures, business directory listings, etc. It almost doesn’t bear thinking about; but you need to because a situation like this can end a small business.
Protect your business, don't make the same mistake as our Kylie Minogue and wait for someone else to come along to apply for your brand.