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Lost in translation: The People vs Kim K

09 July 2019

#Intellectual Property, #Technology, Media & Telecommunications

Blair Beven

Published by Blair Beven

Lost in translation: The People vs 
Kim K

Japan is sending an envoy of intellectual property lawyers to the US to help sort out the dispute with television celebrity Kim Kardashian regarding her proposed choice of trade mark for her body shape solutions line ‘Kimono’.

Kim Kardashian has started a rather curious diplomatic row in her choice of name for her products prompting accusations of cultural appropriation. The word ‘kimono’ is a very well-known word in Japan and is closely associated with a long traditional robe/gown which has huge cultural significance. Her choice of the word ‘kimono’ as a trade mark has been considered disrespectful to Japanese culture.

Unfortunately, Kim Kardashian has taken a significant misstep and fallen foul one of the basic lessons of trade mark selection: always consider the normal meaning of a word, including cultural considerations. There are numerous examples of companies, including large multinational companies, choosing brands or logos, with huge marketing hype only to fall foul of cultural considerations.

Legally there is nothing wrong with Kim choosing a normal word for her product line so long as it is not directly descriptive or has some other deficiency in its registrability. For example, Kim would have trouble registering the word ‘kimono’ on its own for robes.

In fact, the word ‘kimono’ has been applied and registered 34 times in the USA. In Australia, Hasbro Inc, the large toy company, has registered the word ‘kimono’ for ‘toys and games and dolls in Japanese national dress’. Mayer Laboratories has registered the name ‘kimono’ for condoms in 2007. It would seem that Hasbro and Mayer have avoided the accusation of cultural appropriation. Disney Inc. wasn’t so lucky when it attempted to trade mark the phrase “Hakuna Matata” for clothing and footwear. It seemed tens of thousands of people had “some worries” about the trade mark and its cultural significance to the Swahili people.

But the objection to the registration of the word ‘kimono’ may be misguided. Kim K’s registration for ‘kimono’ will not prevent individuals (or countries) from using the word. Indeed the IP trade mark database is scattered with millions of trade mark registrations for commonly understood words without impeding the use of a word in a cultural way. In 2018 there were over 70,000 trade mark applications filed in Australia.

Apple, for instance owns the trade mark for ‘apple’ (a common fruit) but the registration only stops other companies from using the word ‘apple’  for computers and computer software. This trade mark registration stops others from taking advantage of the trillion dollar reputation and goodwill in the Apple brand. It makes good business sense to trade mark the name for your lucrative product or service. Interestingly, when Apple Inc moved into iTunes music distribution it fought a long legal battle with Apple Corp, the company that manages the Beatles musical works, over the use of the word.

The dispute with Kim K does however raise the broader issue of cultural appropriation and the IP rights of indigenous culture. Kim K made a commercial decision and failed to see whether the choice of words as a brand has any cultural considerations and the potential for bad publicity.

The envoy from Japan does seem a bit excessive. But IP Australia has recently released a paper on Indigenous Knowledge and IP Issues and more recently a fine of $1.3m was issued to an Australian company accused of producing fake Aboriginal artworks so the issue of cultural knowledge an indigenous IP rights is becoming more of an issue. But there will always be a tension between commercial goals and cultural harmony.

Lessons for business

Be sure to research the availability and registrability of your trade mark well before you embark on registering and promoting the term. While you may consider the term to be a fantastic trade mark, do think about the broader cultural issues. Specialist trade mark attorneys and lawyers are experienced when it comes to searching and reporting on any issues and such searches can prevent the unnecessary expenditure and bad publicity cost. In the world of technology and a very high proportion of people being “on the line” it pays to do this research and it makes good business sense to do so.

Author: Blair Beven 

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The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this newsletter is accurate at the date it is received or that it will continue to be accurate in the future.

Blair Beven

Published by Blair Beven

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