#KimOhNo: Can You Trademark a Culture?

I didn’t expect this month’s article to feature the name ‘Kim Kardashian West’, yet here we are…  Late last month, the reality TV star was in the spotlight for the rather controversial, trademarked brand name for her line of new shapewear: Kimono. Now, she has since stated she will be changing the name of her brand, stating “[my] brands and products are built with inclusivity and diversity at their core and after careful thought and consideration, I will be launching my Solutionwear brand under a new name. I will be in touch soon”, after being slated online for offending and disrespecting Japanese culture.

After all, the traditional Japanese kimono is quite the opposite to Kim’s flesh-coloured Spanx, so those who have been brought up admiring the beauty, elegance and tradition behind the Japanese Kimono, have every right to be offended. As one Twitter user succinctly said: “Our traditional garment is not spandex. It is not a beach cover up. It is not something you should use to make a cute pun with your name and slap on a trademark.”

Kim’s “creative” ordeal raises two questions: 1) should those looking to trademark their brand be considering cultural appropriation; and, if there is nothing that is stopping brands from appropriating one’s culture then, 2) is it possible to trademark that ‘culture’?

The Kimono matter is further proof that brand owners, particularly those in the media spotlight, must exercise careful due diligence when selecting a new brand name.

Let’s tackle the first question. It is evident from many cases that cultural appropriation is sensitive ground. Even though the rather cleverly coined #KimOhNo helped spread the news and voice the upset across social media, the matter still led to petitions and representatives stepping in. In KimOhNo’s instance: Daisaku Kadokawa, the mayor of Kyoto, wrote a letter to Kardashian West asking her to reconsider the trademark on Kimono. His staff are now reportedly working to register “Kimono culture” on the Unesco intangible cultural heritage list.

The Guardian reported that he wrote: “Kimono is a traditional ethnic dress fostered in our rich nature and history with our predecessors’ tireless endeavours and studies, and it is a culture that has been cherished and passed down with care in our living. We think that the names for ‘kimono’ are the asset shared with all humanity who love kimono and its culture therefore they should not be monopolized.”

So, some thought and consideration ought to be made, especially if you want your brand to do well. Common sense, right?

Speaking to Andy King, Partner and Trademark Attorney at Mewburn Ellis, he explains how a simple online search can often provide a decent indication.

“In this case, the social media backlash, mainstream media reporting and even consumer petitioning could have harmed the fledging enterprise before it launched, although the publicity the story has received may equally have piqued consumer interest in Ms Kardashian’s product range.

With copyrighting and trademarking being more prominent and of more importance now than it ever has been, artists and creators really need to think about where they gain their inspiration from.

“The Kimono matter is further proof that brand owners, particularly those in the media spotlight, must exercise careful due diligence when selecting a new brand name. Just as unfortunate translations or linguistic connotations must be checked, so must consideration also be given to possible cultural sensitivities.”

But the problem doesn’t end here. With Kim’s underwear being named after the Japanese dress (even though we assume she was trying to play on her name), deception is another fine line to be dancing over, especially when it comes to creator’s rights and their impact on the public. Andy explained this to us by saying: “There may also be deceptiveness considerations at play in the Kimono case, since a trademark 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.”

With copyrighting and trademarking being more prominent and of more importance now than it ever has been, artists and creators really need to think about where they gain their inspiration from. Not only is disrespecting one’s culture a risk, but, as always, creators need to think if their inspiration is owned by someone else. Which leads us to the second question: can culture be trademarked?

“To appropriate something or to misappropriate something it must be owned by someone in the first place”, says Professor [at the University of Cape Town] Caroline Ncube to the BBC. “What I am saying is that the law doesn’t actually allow us to own cultural heritage like we would like to own it, and so there is no protection.”

Nonetheless, companies must consider whether the possibility of negative backlash for their commercial decisions outweigh what they will gain in the long run. Is it worth it?

This lies true in the UK too. As Andy explains: “The trademark 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.”

But if cultures cannot trademark themselves, what can be done and what should creators be aware of? As Caroline suggests, perhaps the solution is a unique legal system that aims to protect culture that works outside the field of IP law.

Kim is not the first one to fall foul of culture appropriation when trying to trademark and protect her brand. Earlier last year Disney also fell into the spotlight regarding the trademarked Swahili phrase “Hakuna Matata” from the much-loved film The Lion King. A petition for the company to drop its trademark read: “The term ‘Hakuna Matata’ is not a Disney creation, hence not an infringement on intellectual or creative property, but an assault on the Swahili people and Africa as a whole”, although it was said that there was confusion to what the trademark entailed.

A press officer for Disney explained how the trademark was merely a way to protect itself against other companies that might try to exploit the Disney brand when it came to merchandise. They said: “Disney’s registration for ‘Hakuna Matata,’ which was filed in 1994, has never and will not prevent individuals from using the phrase.”
In essence, a company may think to trademark a word or phrase only merely considering its use in the commercial sphere. Outside of this, the public is obviously free to use such phrases, like Hakuna Matata, as they wish.

Nonetheless, companies must consider whether the possibility of negative backlash for their commercial decisions outweigh what they will gain in the long run. Is it worth it? Has Disney been able to prevent other creators from using ‘Hakuna Matata’ pirating their intellectual property? It is all part of the process of developing your brand; what is a wise commercial move, and what should be left alone? In a world of ever-growing diversity and inclusion, it has become more prevalent to know the history and meaning behind everyone’s culture and tradition.