Registering names as trademarks
South African court treatment of KYLIE mark


Social media has been buzzing over the tussle between Australian pop icon Kylie Minogue and US television personality Kylie Jenner regarding trademark rights in the name 'Kylie'. Jenner has applied to register KYLIE as a trademark in the United States for advertising and entertainment services. Opposing the application, Minogue's lawyers described Jenner as "a secondary reality television personality", categorising her role in reality television show Keeping up with the Kardashians as that of a mere "supporting character". The opposition went on to argue that in view of Minogue's reputation as an "internationally renowned performing artist, humanitarian and breast cancer activist", if Jenner were allowed to register KYLIE as a trademark, Minogue's reputation and selling power would suffer as people could confuse the two Kylies. This is a valid argument, particularly in light of Jenner's somewhat dubious reputation for making inappropriate comments on social media and in other public forums.

The dispute raises two interesting questions in the context of South African law:

  • Can a person's name be registered as a trademark?
  • What would happen if the KYLIE dispute came before the South African courts?

Registering names as trademarks

In considering the first question, it is universally accepted that the function of a trademark is to distinguish the goods or services of one person from the same or similar goods or services offered by another person. It naturally follows that in order to qualify for registration, a trademark must be distinctive in relation to the goods or services in question. More simply put, the trademark cannot consist purely of descriptive or common terms, or terms that are deemed to be reasonably required for use in a particular industry. The exception to this general rule is that a trademark registration that might usually be declared too indistinct for registration may be registered where the mark in question can be shown to have acquired secondary meaning, and consequently has become distinctive, as a result of extensive use in relation to particular goods or services.

The issue of whether a trademark is sufficiently distinctive to qualify for registration can become tricky in the context of personal names, as a person cannot be prevented from doing business under his or her own name. Although the Trademarks Act contains no specific provisions on the registrability of names, it is generally accepted in South Africa that on the face of it, an ordinary common surname is non-distinctive. However, a common surname can qualify for registration as a trademark if it can be shown to possess the necessary distinctiveness as a result of extensive use. Uncommon surnames can qualify for registration more easily.

Similar principles should apply to first names. Bearing in mind the function of a trademark, it would be difficult to argue that a common name such as John could inherently function as a trademark. In the case of such a common name, it is unlikely that even extensive use would persuade the authorities that the name qualified for registration as a trademark, unless it took a distinctive logo form. On the face of it, 'Kylie' does not appear to be a common first name in South Africa; it could therefore be argued that it is distinctive enough to qualify for registration as a trademark in relation to entertainment services and potentially other goods.

On the other hand, unusual first names may qualify for registration on their own. In such cases the usual principles applicable for determining whether a trademark possesses a sufficient level of distinctiveness to qualify for registration – either inherently or as a result of use – will apply.

As trademarks are territorial in nature, a name that is common in one jurisdiction may not be common in another and may thus qualify for registration as a trademark.

So if either Kylie (Minogue or Jenner) applied to register KYLIE as a trademark in South Africa, would she succeed? Applying the principles set out above, it certainly seems possible.

South African court treatment of KYLIE mark

Turning to the second question, what would happen if the ongoing dispute between the two Kylies were heard by a South African court? The Trademarks Act allows a trademark application to be opposed on the basis that it constitutes a reproduction, imitation or translation of a well-known trademark that is sought be to be registered in respect of goods or services that are the same as or similar to the goods or services in respect of which the trademark is well known, where such use is likely to cause deception or confusion.(1)

These provisions of the Trademarks Act were enacted specifically to cater for the protection of marks that are well known internationally, but enjoy no registered protection or goodwill in South Africa. To give some context, the provisions were introduced primarily to ensure that South Africa complies with its obligations under the Paris Convention.(2)

It is likely that Minogue would have to use these provisions as a basis for an opposition to the registration of KYLIE as a trademark by Jenner in South Africa. Applying the principles developed in South African cases dealing with the so-called 'well-known' provisions, Minogue would have to show that KYLIE is well known among a substantial number of people in South Africa as being her name and trademark. The mark need not necessarily be well known across the whole population; rather, it would need to be shown to be well known among a substantial number of consumers of the relevant goods or services.

It is unlikely that the South African courts will be called on to adjudicate this particular dispute, as South Africa is not a jurisdiction of major importance to either Minogue or Jenner. However, the outcome of such a case in South Africa would be interesting, particularly in view of the growing global reality TV culture, and whether Minogue could prove that:

  • the assessment of Jenner as a mere "secondary reality television personality" is correct; and
  • her own reputation, as represented by the KYLIE trademark, far exceeds that of Jenner and is substantial enough in South Africa to make it likely that use of the KYLIE mark by Jenner would cause confusion in the minds of the public.

For further information please contact Vicky Stilwell at KISCH IP by telephone (+27 11 324 3000) or email ([email protected]). The KISCH IP website can be accessed at


(1) Sections 10(6) and 35(3) of the Trademarks Act (194/1993).

(2) See Section 6bis of the Paris Convention for the Protection of Intellectual Property, March 20 1893 (as revised).