EAGLEGATE Lawyers’ Principal Nicole Murdoch discusses the case of Australian entrepreneurs trying to trade mark a popular word as their business brand should take heed of the legal stumble by American celebrity Kim Kardashian. 
The social media, TV and fashion range queen tried to trade mark the word Kimono to brand her new range of shapewear but after an enormous lash back from the public – especially the Japanese- she has retreated from this idea.
Brisbane intellectual property and Trade Mark lawyer Nicole Murdoch says the outcry forcing Kim Kardashian to abandon the trade mark move is a useful tip to others trying to grab a populist brand name that may already be widely used.
Ms Murdoch, Principal with Brisbane boutique Intellectual Property and Privacy law firm EAGLEGATE Lawyers, which handles matters of Patent law, Copyright law, Trade Marks, Domain names and general Cyber law, says while Kim Kardashian sought a trade mark for a specific font version of the word Kimono, this is not enough to justify the registration of the mark.
“A specific font may not be enough to overcome the descriptiveness of the trade mark. In Australia, a trader should not be permitted to register a trade mark which other traders would legitimately wish to use, unless it can be shown that the trader has used it so heavily that when people hear the term they think of that trader.
“Whilst we do not doubt the fame of the Kardashians, there are some trade marks that are so distinctive that no amount of use could ever cause a mark to be so synonymous with one trader that it acts as a badge of origin.
“The trade mark application was not just filed for lingerie, she wanted to use the word Kimono on Kimonos themselves.
“It is a defence to trade mark infringement to use a mark descriptively – thus anyone selling Kimono’s can say they are doing so,” she says. She would suffer a hollow victory in that sense. She may be able to obtain registration of the trade mark but would have difficulty enforcing it in respect of some goods.
Kim Kardashian was accused of cultural appropriation in trying to trade mark the word Kimono as the brand name for her range of flesh coloured shapewear.
Critics pointed out the Japanese kimono garment dated back some centuries and Japanese people were outraged at the bid to hijack a globally recognised name for a clothing line with no connection to Japanese tradition.
Ms Kardashian has since confirmed she will find another name for her clothing range.
Nicole Murdoch says the trade mark stumble is a timely reminder to Australian entrepreneurs to thoroughly research the legal aspects of trade marking a word or phrase and not just rely on a gimmick to brand the business product.
“In some cases, there is not enough fame in the world that can allow a person to appropriate a whole culture,” she says.
Nicole Murdoch is the Principal of EAGLEGATE Lawyers and a recommended Lawyer in the 2018 listing of Leading Queensland Intellectual Property Lawyers – Doyles Guide. As a qualified Lawyer, Electrical Engineer and Trade Marks Attorney, Nicole’s qualifications and practical experience allow her to fully comprehend the nexus of the law, technology and business to provide advice to her clients – which is both commercially sensible and technically practical. Nicole’s legal experience includes Intellectual Property litigation including, trade mark, patent, copyright and domain name disputes, and associated misleading and deceptive conduct, confidential information and passing off disputes. She also acts in Information Theft cases to prepare clients for data breaches, assists upon a breach, gives advice in respect of mandatory data breach notifications, and prosecutes insider threats. You can connect with Nicole via email nmurdoch@EagleGate.com.au
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