What do Kim Kardashian, rapper Cardi B and Paris Hilton have in common? – all have come unstuck over moves to try and trade mark common words.
Brisbane intellectual property and trade marks lawyer Nicole Murdoch says there’s a trend now of celebrities trying to trade mark their catch phrases or use a common term as a trade marked business brand.
She says Australian entrepreneurs trying to copy the move and trade mark a popular word as their business brand should take heed of the legal stumbles by celebrities Kim Kardashian, Cardi B and Paris Hilton.
Kim Kardashian tried to trade mark the word Kimono to brand her new range of shapewear, while rapper Cardi B recently attempted to trade mark her catch phrase “Okurrr”. Paris Hilton was able to trade mark her phrase “That’s Hot” in America but was rejected when she tried to register it in Australia.
Nicole Murdoch, Principal with Brisbane Intellectual Property and Privacy law firm EAGLEGATE Lawyers, which handles matters of TradeMark Litigation, Patent law, Copyright law, Domain names and general Cyber law says the fails are a useful tip to others trying to grab a populist word or phrase that may already be widely used.
“The law is that a trader cannot trade mark a word that would legitimately wish to be used by other traders – unless the trader can show that it has used the trade mark so heavily that the mark has become synonymous with that trader.
“Apple successfully registered the trade mark Apple for computers – but no trader would be able to register a trade mark for the plain word Apple for Apples. Someone attempted to trade mark TEA – for tea…. You can guess how strongly that trade mark application was rejected” she says.
Rapper Cardi B’s trade mark fail came when America’s Patent and Trade Mark Office said her word “Okurrr” was commonplace.
The office reportedly stated the word is “commonly used in the drag community and by celebrities as an alternate way of saying ‘OK’ or ‘something that is said to affirm when someone is being put in their place'”.
Yet previously US socialite Paris Hilton was able to trade mark her catch phrase “That’s Hot” and in 2007 successfully sued the Hallmark greeting card company for using the phrase without her permission.
However Ms Hilton’s bid to trade mark “That’s Hot” in Australia failed which Ms Murdoch says shows how trade mark law can vary between countries.
Ms Murdoch says Australian traders are often tempted to adopt descriptive terms when applying to register a trade mark as it instantly indicates their goods and services to consumers.
“But they can’t then expect to be able to stop other traders also using the same term to describe the same goods and services.
“Traders also have to protect their trade marks from becoming generic terms. Some examples of trade marks which where unique to that trader initially but which have now become descriptive of goods is doona, eski, hovercraft, trampoline and Aspirin.
The process of a trade mark becoming descriptive of its goods is referred to as becoming genericized,” she says.
Nicole Murdoch says the latest trade mark stumbles are 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 Kim Kardashian’s case the trade mark application was not just filed for lingerie, she wanted to use the word Kimono on Kimonos themselves.
“It illustrates that despite any celebrity’s fame, 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 person or brand that it acts as a badge of origin,” she says.
If you have trade mark issues, call EAGLEGATE today.