The Kylie v. Kylie fight has moved on from legal representatives for Kylie Minogue and Kylie Jenner. On the heels of a highly-publicized trademark showdown between the Aussie singer and the 21-year reality star-slash-makeup mogul, Minogue has been waging a fight against Saldum Ventures in an attempt to block the registration of “Kylie” for use of sunglasses by the Spanish company, which owns an growing array of e-commerce brands.
It turns out that while Jenner and Minogue were angling for federal trademark protections in the U.S. for their first name, with Minogue’s legal team formally opposing at least three of Jenner’s trademark applications for registration – a fight that would ultimately end in a quiet settlement, another party was looking to amass registrations for the word “Kylie.”
In 2017, right around the time that the Kylie Minogue v. Kylie Jenner opposition battle got its start in the U.S., Saldum Ventures – the parent company of Hawkers, a digitally-native, vertically integrated sunglasses business that has been projected to be a budding rival to the Luxottica-owned Ray-Ban – began filing trademark applications for “Kylie” for use on eyewear and watches.
Saldum’s application with the U.S. Patent and Trademark Office (“USPTO”) was swiftly shot down, thanks to a preliminary rejection, in which the USPTO examining attorney asserted that the proposed registration was confusingly similar to an existing registration for the word “Kylie” for use on jewelry and watches. The holder of that registration? Kylie Minogue. When Saldum failed to respond to the USPTO’s initial rejection, the application was deemed abandoned.
The Alicante-based company has not have much luck in Minogue’s native Australia, either, as its attempt to secure a registration for “Kylie” was similarly shot down by the national trademark body.
However, it has not been all losses for Saldum. As of this month, the 6-year old company – which has been boosting its eyewear presence in Italy, Germany, Australia, France, Portugal and the UK since landing nearly $60 million in funding in 2016 – landed a win before the European Union Intellectual Property Office (“EUIPO”).
The EUIPO’s Opposition Division determined last year that Minogue’s entity KDB – which opposed Saldum’s application in 2017, arguing that the proposed registration of “Kylie” in connection with eyewear and watches clashed with KBD’s existing registrations – could block Saldum’s registration for use on watches, but could not stand in the way of its quest for a registration for the word “Kylie” for use on eyewear.
Unsatisfied with the outcome, legal counsel for Minogue – who has maintained a collaboration with British eyewear chain Specsavers since 2017 – took the matter before EUIPO’s Board of Appeals, which decided early this month that despite maintaining international rights for the “Kylie” mark for use on jewelry, Minogue’s team “failed to furnish the required evidence” to establish its international rights in “Kylie” in connection with eyewear.
As such, the EUIPO’s Fourth Board of Appeals sided with Saldum and dismissed KDB’s eyewear opposition. Now, the matter will go back before the EUIPO to proceed in the registration process.
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