Kim Kardashian West has recently sparked controversy after announcing the launch of her new underwear line, “Kimono Solutionwear”. The release has been met with backlash, with many saying it exploits Japanese culture. It has also since been revealed that she sought to protect the marks “Kimono”, “Kimono Body”, “Kimono Intimates” and “Kimono World” in the US, causing further outrage and raising questions around the appropriateness of registering such culturally sensitive names and terms.
The trade mark laws of the UK and EU do not have provisions that specifically prevent the registration of a name on the basis that it may be deemed to be ‘culturally sensitive’. The closest provisions that we have are the absolute grounds of contradiction to public policy or accepted principles of morality, or bad faith, but both of these are relatively difficult to fall foul of.
That is not to say however that there are not legal provisions elsewhere around the world that do protect the misappropriation of cultures. New Zealand is, for example, understood to have specific provisions in place to recognise and protect the Māori culture and traditional knowledge, and to prevent the registration or use of trade marks that would be considered exploitative, inappropriate or offensive by Māori or contrary to Māori values. Equivalent provisions may exist elsewhere around the world, and so brand-owners must be wary.
This latest story also brings to mind the trade mark dispute involving the NFL’s Washington Redskins, in which Native Americans tried to prevent the NFL team from registering the name as a trade mark in the US on the basis that the “redskin” word is an offensive and disparaging racial slur. The current situation in this dispute appears to be that preventing registration based on the Native Americans’ claims would be improper and an unconstitutional infringement on freedom of speech. In view of this arguably more contentious and emotive case, it would therefore seem unlikely that Ms Kardashian would be prevented from registering her “Kimono” mark purely on any cultural misappropriation basis, at least in the US, despite the proposed use and registration of the name for underwear conflicting with the traditional, and arguably quite conservative Japanese culture.
There may also be deceptiveness considerations at play in this particular “Kimono” case, since a trade mark is unregistrable if it is of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service). An application for the “Kimono” mark for the “shape enhancing underwear” at issue may well be regarded as being deceptive as to the nature of the goods, given the traditional meaning of “kimono” as a traditional Japanese robe-like garment. Furthermore, it is also understood that the US trade mark office (the USPTO) refused an application for “Kimono” by Ms Kardashian because the Examiner felt that the mark was descriptive of the goods. And so the more ‘ordinary’ rules around trade mark registrability must also be kept in mind.
Perhaps most importantly of all though, this “Kimono” story is further proof that brand owners, particularly those in the media spotlight, must exercise sufficient care, attention and due diligence when selecting a new brand name. In the same way that the possibility of any unfortunate translations or linguistic connotations must be checked, so must consideration also be given to any possible cultural sensitivities. A simple online search can often give a decent indication. In this case, the social media back lash, mainstream media reporting and even consumer petitioning could well have harmed the fledging enterprise before it even launched, although the publicity the story has received may equally have piqued consumer interest in Ms Kardashian’s product range. As the saying goes, “there’s no such thing as bad publicity”.
Regardless, Kardashian since appears to have decided to rebrand her underwear range after the public outcry; the claims of potentially profiting from appropriating Japanese culture and ignoring the history of the Japanese people in America, especially during WW2, together with a letter from the Mayor of Kyoto requesting she reconsider using “Kimono” as a trade mark were all evidently enough for a change of heart on this occasion.