In the fashion industry, companies always seek a means to distinguish themselves from their competitors and raise awareness about their style and brand to the public. Trademarks are the most common way to do so. Whereas it is by the use of distinguished names such as Louis Vuitton, a logo such as the iconic interlocked double C of Chanel or the distinguished blue colour used by Tiffany & Co, trademarks are widely used means of intellectual property by companies and individuals to associate themselves with their product or image. Other marks can also be a single word or phrase, a sound, a shape, a signature or a combination of these elements.
The use of a name, whereas it is a designer or a celebrity, can help the public to make the association between the goodwill and image of the brand by itself. That is why it is not uncommon to see celebrities with their name registered as a mark in order to use and license their name to promote a product or an establishment.
Most recently, even public figures are resorting to register their name in order to associate themselves with a particular image, like Melania Trump. The First Lady, Melania Trump, has sought recently to register in the US "MELANIA" for watches and jewellery, various cosmetic products, and also the name "MELANIA TRUMP" for jewellery and cosmetic goods. This comes after her initiative to protect her own image and name from unsolicited association without permission such as the sale of products using her likeness in Slovenia to sell pastries, honey and even underwear.
Kylie v Kylie
Another recent example is Kylie Jenner's attempt to register her own name "KYLIE" and the opposition filed by Australian singer, Kylie Minogue. The Minogue currently holds the trademarks for "Kylie Minogue", "Kylie Minogue Darling" and "Lucky – the Kylie Minogue musical". Last year, Kylie Jenner filed an application to register her name for cosmetic goods, bags, jewellery, clothing, and fragrances. However, before a trademark has been registered, there is a period time for similar mark owners to file an opposition against registration. If the opposition is successful, an application can be refused. The singer´s representative filed for opposition to Jenner's application, as her application includes services connected to advertising which could potentially not be favourable for Minogue's registered mark.
Last week, it seems Jenner's and Minogue's representatives may have achieved an agreement for Minogue to withdraw her opposition proceedings. And without any other interested parties showing interest to oppose Jenner, her mark application may be now able to proceed further. The use of trademarks is widely popular due to the protection its registration can provide to a brand. A registered trade mark can help to prevent third parties from using a registered trade mark to take advantage of its goodwill and reputation and getting financial benefits without permission of its owner. Nowadays the owner of a registered mark can enforce legal action and even bring criminal charges if third parties are using a brand to create and sell fake articles ('counterfeiting').
Among current examples, we can find the ongoing trade mark dispute between Run-D.M.C., and the retailers Amazon, Walmart and Jet.com. Run DMC were a hip-hop which was founded by Jason Mizell, Darryl McDaniels and Joseph Simmons in the 80s. Although the band officially retired in 2002, the band were successful in making deals with clothing brands such as Adidas to expand their own brand. Recently, one of its original founders, Mr McDaniels filed a trademark infringement suit against the retailers for "distribution and sale of merchandise that's branded with the Run-D.M.C. name without permission". The products would include clothing, glass, wallets and more with the band's name in the description or title. Mr McDaniels claimed that would mislead consumers into thinking that the band is endorsing the products and considered that it would affect other current deals.
Even after a person has passed away, the representatives of his or her estate can still own her intellectual property, and this will include the use of the name and likeness of the deceased person and therefore can still enforce legal action in case of infringement. The Estate of Marilyn Monroe is a clear example of this. It owns various trademark rights relating to the iconic celebrity and also owns exclusive rights to Marilyn Monroe's identity, image, name, and likeness for licensing to third-parties.
Last year, the Monroe Estate became aware of a NY-based company's, Fashion Central, unauthorised used of the image and marks of Ms Monroe (including her quotes) to manufacture and sale of packaging, tags, and other branding. The Estate alleges that, while the company has not used her name on their products, their use of her image and marks is enough to cause confusion to the public, as her her image is widely recognisable and it would have misled them into thinking that the use was authorised and that the actions of Fashion Central were in bad faith, deliberate and wilful.
As seen above, companies tend to invest millions in their brands to ensure their image is represented adequately to the public and infringement can cause damage to the goodwill invested in the brand. Therefore, it is important to get as much protection as necessary to prevent this.