Battle looms over ownership of ‘Kyle & Jackie O Show’ trademark
Kyle Sandilands and Jackie Henderson’s new employers may not be able to call their program “The Kyle & Jackie O Show”, trademark data held by IP Australia suggests.
According to a database search, the trademark “Kyle & Jackie O Show” was lodged by Austereo – now Southern Cross Austereo – in July 2006. The trademark was formally entered on the register in 2007 and is not due for renewal until 2016.
The trademark extends across seven categories from broadcasting and entertainment to advertising, promotion and items such as DVDs, games and t-shirts.
Last week, the duo announced they were leaving SCA’s Sydney station 2DayFM at the end of this month. Rival media company Australian Radio Network has confirmed that it is in talks with the broadcasters, with the pair most likely to end up on Sydney’s Mix FM.
Southern Cross Austereo did not respond to Mumbrella’s sister title Encore’s questions about whether it would seek to enforce its trademark if the duo tried to use The Kyle & Jackie O Show name elsewhere.
A spokesman for Sandilands’ management declined to comment on the record, but maintained the trademark is owned and controlled by Sandilands and Henderson. However, the IP Australia registration does not back up this assertion.
The owner of the trademark is listed as Austereo Pty Ltd, with the address given as the company’s Sydney headquarters in Goulburn Street.
There was no opposition when the application was made by Austereo Pty Ltd in July 2006 to hold the trademark for 10 years.
Solicitor Rebecca Mason at von Muenster Solicitors and Attorneys in Sydney, said SCA would not be able to continue using the trademark following Kyle and Jackie’s departure without running into serious complications of consumer law.
She said: “In reality, Southern Cross Austereo will probably let it lapse when the trademark expires because there’s no value in it if they are not going to be able to use the trademark due to the resignations and potential legal issues.”
While the pair’s future show may not be able to use the exact name ‘Kyle & Jackie O’, Mason said the duo cannot be stopped from using their own names.
She said: “That specific configuration of ‘Kyle & Jackie O’ would be difficult for a competitor to use, but you cannot prevent somebody from using their own actual name, which they’ve previously used. So they could still refer to themselves as Kyle Sandilands and Jackie O, but potentially there would be issues with calling another show, Kyle & Jackie O.”
Megan Reynolds
who cares anyway……who is going to listen to them??
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This is a non story. SCA cannot use the trademark as they would be open to a tortuous claim of passing off. If they don’t use a mark for three years they are open to losing it. Perhaps they could block the exact phrase of “Kyle and Jacki O show” but even then they’d be risking restraint of trade and potentially an attack on the mark for being too descriptive. Trademarks can only be registered for 10 years. SCA would have registered this to stop knock off merch being made.
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Jackie picks another letter. Sorted.
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Hi Billy, I think the key point in your comment is correct. It’s a non-issue. As stated, the show name is descriptive and you cannot trade mark someone else’s actual name. Passing off is a common law action, but that wouldn’t really be the main grab here. There is no obligation to register your own name as a trade mark, but if you do it can be renewed indefinitely for subsequent 10 year periods. So unless SCA finds another two radio hosts actually called “Kyle” and “Jackie O” this would be a useless battle for them. Kyle or Jackie O would be free to seek removal of the trade mark for non-use, but in 3 years’ time….if they can be bothered by then.
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The trademark is listed as “Kyle and Jackie O”. So all that needs to happen to get around that is to register “Kyle and Jackie O Show” or “Kyle & Jackie O”. Many years ago a building society tried to register the name New South Wales Permanent but that was already registered so they called it NSW Permanent. For many years they used the slogan “How do you do it? You NSW it”.
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I think it is actually an important issue – it’s more than just the name of the show. The show name is also attached to a large social media audience. https://twitter.com/kyleandjackieo. I’m assuming there is also a facebook page and possibly a Youtube channel. Who now owns those audiences? Kyle and Jackie O or SCA? Can they take those social brands with them?
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Yes, the social media audience is one related to the SCA radio show. Strictly speaking, SCA owns those social media pages and the audience that goes with them (building up a profile for the radio show would have been part of the employment terms). The fact that the show is built up around 2 personalities makes it a more complex legal issue, but the commercial reality is that the show’s followers are unlikely to keep following SCA without the two stars.
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Hi Sara,
I’m aware passing off is a tort and it is unlikely to be relevant but if SCA used the trademark without the express permission of Kyle and Jackie O then the presenters could I think bring an action under common law. My main issue with this article is the headline. “Battle Looms”. There is no indication either in fact or at law that a battle is looming. In fact the article is factually wrong. It says: the trademark “Kyle & Jackie O Show”. That is not the trademark. Mumbrella’s own screenshot shows the mark is for Kyle and Jackie O and the article itself says : you cannot prevent somebody from using their own actual name.
So where is the issue or the story? This is a very confusing article.
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mumbrella? encore? two of australia’s biggest non-brands. reporting a non-news article. go and join the abc you pack of vegan idtiots.
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Hi Michael,
I demand a retraction.
I like bacon.
Cheers,
Tim – Mumbrella
The trade mark could only really be used to prevent others adopting that name – it can’t really work on the named people.
It could conceivably affect marketing efforts – but not a lot else.
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