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Kylie or Kylie, who owns the name?

A trade mark for similar names can be opposed under Australian intellectual property law.

Throughout history, there have been some people influential enough to be known only through a single name. The ranks of mononymous persons include those in all walks of life from Michelangelo and Bono to Confucius.

Being known by only one name carries a degree of distinction, which isn't an issue when there's only one famous Nero. But what happens when two celebrities want to go by the same name? That is the question facing Kylie Minogue and Kylie Jenner, as the two celebrities square off over a U.S. trade mark on the name Kylie, another instance of how fame plays into intellectual property.

Kylie versus Kylie

Kylie Minogue filed to block Kylie Jenner's trade mark application on the grounds of priority and dilution.

Kylie Jenner is an American reality show celebrity from Keeping Up With the Kardashians. The trade mark dispute centres around an application put forth by Kylie Jenner, Inc. for a trade mark of the name Kylie in advertising goods and services on April 1, 2015.

During an extended opposition period, Australian pop star Kylie Minogue filed to block Ms. Jenner's application through her firm KDB. A notice of opposition filed with the United States Patent and Trademark Office (USPTO) lays out a number of grounds for blocking Ms. Jenner's application, including priority and dilution.

Kylie Minogue has held a number of trade marks in the United States, including for the brands Kylie Minogue Darling and Kylie filed in 2006. The notice of opposition also notes that Ms. Minogue has been an entertainer since 1979 and that she is well known as a singer in the United States.

Ms. Minogue further suggested that an association with Kylie Jenner would be damaging to her own brand, as Ms. Jenner has faced controversy from social media posts and received complaints from disability rights advocates and the African American community.

Trade marks under US and Australian intellectual property law

In the United States, an application can be opposed due to similarity with an existing trade mark if it will create confusion between the two. If a plumbing company and a recording studio apply for the same name, they will likely not be rejected over confusion.

Since Ms. Jenner and Ms. Minogue are both recognised celebrities in the US, it is likely that the USPTO will consider there to be a risk of confusion.

Under trade mark registration in Australia, the same consideration would have to be made. Under the Trade Marks Act 1995, the owner of a trade mark can oppose the new issue of a similar trade mark.

As the two Kylies vie for the right to the name, it will be interesting to see how Australian and American IP law shape the fight.