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#KimOhNo – but do trade mark laws say yes?

01.07.2019

Kim Kardashian is again brewing up a social media storm – this time over her application to trade mark the word “Kimono” for her new range of shapewear.

Kimono, of course, is a Japanese traditional robe, which is loose and typically colourful, and has wide sleeves. Kim Kardashian’s shapewear looks nothing like a kimono (in fact it is probably the opposite – tight-fitting and plain as befits shapewear). Rather, the trade mark is a clever play on her first name.

She has faced widespread backlash for what social media users around the world have interpreted as blatant cultural appropriation, with thousands of users responding to her original post announcing the shapewear range with photos of what a kimono actually looks like.

Disapproving users have started to use the #KimOhNo hashtag on social media to express their dissatisfaction. As of the time of writing this article, this hashtag is still racking up thousands of tweets and retweets every hour, on Twitter alone.

Somewhat ironically, if you typed “kimono” into Google at the time of writing this article, the top results will be for articles of the Kim Kardashian controversy rather than for anything related to actual kimonos.

Social media outrage aside, there is a legal question at hand – can Kim Kardashian actually trade mark the word “Kimono”, and if so, what does it really mean?

Stylised marks do not attract rights over the words used

The controversy started with Kim Kardashian’s recent post announcing the shapewear line. A search on the USPTO database shows two recent trade mark applications, one for a stylised “KIMONO” mark on 19 June 2019 and another for a plain word “KIMONO BODY” mark on 11 June 2019, with respect to a number of classes of goods including lingerie, shapewear and bags. Well, that wasn’t too bad! A stylised mark, after all, only gives you protection over the style applied and not over the word itself.

A closer look reveals that in April 2018 the same applicant, Kimono Intimates Inc., reportedly Kim Kardashian’s shapewear company, applied for a number of other Kimono marks, including one for the plain word “Kimono” in class 25 (US classes 22 and 39) for lingerie. Those marks are currently under examination. So the “cultural appropriation” has been quietly underway for over a year already!

Can Kim register her trade marks for “KIMONO”?

Given that Kim’s range of shapewear clearly does NOT comprise any kimonos, can Kim really register Kimono as a trade mark for her shapewear?

The answer, as far as trade mark law is concerned, is a resounding yes. In fact, this is exactly what trade marks are intended to do – to register exclusive rights in non-descriptive words in relation to goods or services that would otherwise not be associated with those words. Take Apple for instance – what does an apple have to do with a computer or phone? Nothing, which is precisely why they were able to register the trade mark. Trying to register “KIMONO” as a trade mark for actual kimonos would be like trying to register the word “COMPUTER” for computers – you will never succeed.

Oh no! Kimonos no longer kimonos?

So what does it mean if Kim Kardashian succeeds in her trade mark application? Well, for one, it does not mean that she owns the word “KIMONO”. This is a common misconception about trade marks. Going back to the Apple example, the fact that Apple has a trade mark for its electronic goods and services does not mean that farmers cannot now use “apple” to sell or describe their apples. A trade mark grants exclusive rights only in the classes of goods or services that you register the trade mark for. Even within those classes of goods or services, another person can still use the trade mark if it is simply used in a descriptive manner to describe the characteristics or nature of a product or service. This is why you always need to be wary when seeking a trade mark over words that have an ordinary meaning that could be used descriptively for your goods or services.

In short, Kim Kardashian successfully registering her “KIMONO” marks over shapewear will by no means allow her to prevent people using the word kimono descriptively when selling kimonos. However, whether she will use such a registration unethically is another question altogether. In the trade mark world, it is not uncommon to see larger corporations acting as bullies by sending “cease and desist” letters to smaller traders based on weak or baseless legal arguments, which nevertheless forces many of those smaller traders to relinquish their rights purely as a result of lack of funds or resources to fight a legal battle.

In Australia, there are provisions in our legislation to deter such conduct, but ultimately to enforce your rights under legislation against an uncooperative opponent, you will still need to take legal action. That’s a cost that many SMEs simply cannot afford. Given the intense scrutiny that she is already under for her shapewear range, one would hope that Kim Kardashian’s company will not “bully” kimono sellers.

Worries about “hakuna matata”

Cultural appropriation is not something that is legally recognised in trade mark law, but the tension between its concept and the rights proffered under trade mark law has existed for some time. Kim Kardashian is far from the first person to test its boundaries.

In fact, Disney has faced a number of accusations of cultural appropriation. For example, Disney has owned the trade mark for “HAKUNA MATATA” in class 25 for T-shirts in the USA since 1994, with the release of its animated Lion King movie. The term is actually a Swahili phrase meaning “no worries”. It’s a term that is widely used in Eastern Africa. However, it is not widely known at all in the USA, and prior to the Lion King movie, probably had little or negligible significance there. As far as trade mark law is concerned, it was perfectly fair for Disney to then register that trade mark in the USA, having popularised the term and made the public in the USA associate the term with the movie. In fact, if another person tried to use “HAKUNA MATATA” in the USA on a T-shirt, people would probably think that it was a Disney-licensed T-shirt in reference to the Lion King movie. This is exactly what trade mark law is designed to protect. Naturally, if Disney tried to apply for the same mark in Africa, then it would be very unlikely to succeed due to the ordinary meaning associated with it. Which is how trade mark law is intended to operate.

Of course, none of that is particularly helpful in mitigating the insult that an African person may feel about the fact that a common African term is “owned” by Disney in the USA. And that is often what it comes down to – public backlash and ethical considerations.

In a more recent example, in May 2013 Disney filed a trade mark for “DIA DE LOS MUERTOS” in the USA in respect of education and entertainment services. Dia de los Muertos means Day of the Dead in Spanish, which of course is a widely celebrated Mexican festival to pray and remember friends and family members who have passed away. Disney’s filing was met with a huge backlash, no doubt helped by the size of the Mexican community in the USA. This ultimately resulted in Disney apologising and withdrawing the application, stating that it was registering trade marks for potential titles for its upcoming movie. The title of the movie was changed – it was ultimately released as “Coco”.

However, since then three other applications for “DIA DE LOS MUERTOS” in the USPTO (in respect of fireworks, lottery and beer respectively) have gone through to registration. Of course, these marks would not be nearly as high profile as a Disney trade mark application and so would not have faced similar (or any) public backlash, but the point remains – if the trade mark is not descriptive of the goods or services in respect of which it is applied for, then it may well proceed to registration, cultural appropriation or not.

It’s a scandal. Or maybe it isn’t.

There is one potential legal avenue that may be available to stop a trade mark proceeding to registration where there is perceived cultural appropriation, although we are not aware of a past instance of it being used in this context. Under s42 of the Australian Trade Marks Act 1995 it is possible to reject a trade mark application based on the mark being scandalous. Similar provisions exist in many other trade mark jurisdictions. The question is whether cultural appropriation can be considered scandalous and, if so, what degree of cultural appropriation would be required to push the matter into “scandalous” territory. Traditionally, the “scandalous” concept is applied to derogatory, racist, offensive or discriminatory marks. While it would be interesting to see a case like this go to Court, or at least through the trade marks office, the availability of this ground of rejection for cultural appropriation would be far from certain. And we would not want to bet on the result one way or another if we had a choice.

To add another layer of complexity, the “scandalous” ground for rejecting a trade mark has just been ruled to be unconstitutional in the US following the recent Iancu v Brunetti judgment, in the sense that the concept of a trade mark being immoral or scandalous endorses a particular subjective viewpoint. This is in the context of the First Amendment, which of course is not a barrier to us in Australia; however, trade marks are becoming an increasingly global asset, and you cannot ignore potential issues in overseas jurisdictions if you have any intention of operating beyond Australia in the future.

In our opinion, the takeaway from all of this is that trade mark applicants should exercise some common sense, and a fair amount of decency, when dealing with sensitive cultural issues. It can be as much, or sometimes more so, about ethics than it is about a strict legal right. There may be very little actually preventing an application for a trade mark that would amount to cultural appropriation, as far as trade mark laws are concerned, but is the potential public backlash worth it? And, even in this fast changing world, are not some things still sacred.

 

UPDATE: as of 1 July 2019 Kim Kardashian has bowed to public pressure and will no longer be calling her new shapewear line “Kimono”.