Ms Kim Kardashian-West caused a stir last month for co-opting the use of the Japanese word ‘Kimono’ for her new brand of shapewear clothing. A kimono is a traditional Japanese dress that is somewhat of a cultural touchstone for Japanese people.

Despite the word being a play on her first name and the literal meaning of the word ‘kimono’ being a thing (‘mono’) to wear (‘ki’), there have been widespread concerns surrounding whether the trade mark is cultural appropriation and represents an undesirable exploitation of a foreign tradition for commercial gain.

This raises the interesting question: what elements of culture can be trade marked?

A trade mark may be rejected by IP Australia on the following grounds:

(a) The mark being too similar to a previously existing mark in a similar category of goods or services, that would deceive or cause confusion among consumers;
(b) The mark would be misleading or have deceptive connotations of the product – such as falsely indicating the origin of the product in its name (e.g. Yanx cigarettes from a country other than the United States);
(c) The mark being too generic and incapable of being distinguished – such as use of some foreign language words that would need to be used by other traders (e.g. “Oro” and “Cinque Stelle” to describe coffee), geographic names, or a common surname; and/or
(d) the mark being offensive/scandalous – though this is narrowly interpreted and is limited to racist slurs and offensive language.

In Australia, ‘Kimono’ is actually already a registered trade mark by Hasbro, for use with toys but not including doll’s clothing and dolls in Japanese national dress. This means that that word may be used exclusively in relation to certain items (toys) that have no relation to the actual dress itself. This trade mark, like Kardashian-West’s, would not prevent others from using the word ‘kimono’ in other contexts, and it would be highly unlikely that any Japanese dress makers or retailers would be restricted from selling their goods.

The above means that there is no express limitation on impugned culturally appropriative terms – theoretically, however, the discretion afforded to examiners of trade mark applications may be expanded to restrict registration of any marks that seek to capitalise on the goodwill of a culturally significant item on the basis of it being offensive or misleading. The scope to do so is there.

A Japanese delegation requested that Kardashian-West reconsider applying for the mark, with the Mayor of Kyoto, Mr Daisaku Kadokawa, explaining that Japan would be seeking to register the word ‘kimono’ on UNESCO’s Intangible Cultural Heritage List (a list that includes particular techniques for avalanche risk management by Swiss and Austrian alpine regions and the Irish sport of hurling).

Kardashian-West, for her part, withdrew the application for the trade mark and issued an apology – no doubt owing to the high profile nature of the controversy and the bad press generated.

Ultimately, while trade mark laws do not expressly prevent cultural appropriation, designers of trade marks and their businesses should be cautious with attempting to register a trade mark that holds significance to a foreign or indigenous culture, since it may lead to backlash that may be harmful to the business.

There has been similar controversy surrounding indigenous artwork being faked and otherwise misappropriated – stay tuned for a rundown of that case and its ramifications in Part 2, which addresses this issue within an Australian context.