Dior against adult film star Gigi Dior’s trade mark application for her own stage name

 

This Kat, while still junior in his professional path, has a growing interest in luxury brands (Merpel says, just you wait…) and this “saucy” trade mark story on Page Six kept him amused for the day. 

According to Page Six, “Porn star Gigi Dior – known for adult movies about “hot MILFs” – trademarked her stage name last year”; and now (rather unsurprisingly) “fancy French fashion house Christian Dior Couture has filed a legal claim asking to overturn the trade mark, saying she is damaging its business”.  Gigi Dior said, “If I lose my name, I have built a brand around this name, it has become me and my reputation, so it’s really devastating to think I might have to start from scratch and rebrand everything”.  

According to the USPTO database, a trade mark application (no. 97099328) has been indeed filed for “Gigi Dior” by Gramkey Investment, Modeling and Consulting in Class 41 in respect of “Entertainment services, namely, personal appearances by a porn star; Entertainment services, namely, providing a web site featuring non-downloadable adult-themed photographs and videos”.  The application has been published and an opposition has been filed (presumably by Christian Dior). 

This dispute is not the first of its kind.  Some recent examples include for example:-

• In the US - Burberry’s action against Chicago-based rapper Burberry Jesus who often posted photos and videos of himself in Burberry products on his social media platforms.  Jesus went as far as wrapping his cars in prints bearing Burberry’s classic signature print (see e.g., here)

• In the UK – Tiffany’s successful opposition against a UK trade mark application (no. UK00003305906) for “Cotswold Lashed by Tiffany” in Classes 3, 41 and 44 in relation to cosmetics and beauty related services (see e.g. here)

One would often see news reports on these types of disputes suggesting that it may be incredibly unfair to have someone fight for the right to be able to use their own (usually) stage name, “nom de plume” or business name.  It would be difficult to deny from a brand owner’s perspective that such use would emphasize that there may be some kind of “intimate” connection with the brand and may therefore mislead the relevant consumers or free ride on the aura of the better-known and usually well-known trade mark.  As such, it is highly likely for brand owners to take actions against such uses.  The chances are especially high if the user seeks to apply for a trade mark application for related goods and services, or in Gigi Dior’s situation, services that Dior does not want to be associated with.  One should therefore particularly bear the associated risks in mind should they wish to apply for such trade marks or use such signs in the course of trade. 

Of interest to users of such signs in the course of trade is that in the European Union, following the trade mark reform package in 2015, the “own name” defence has now been limited so that it is only available to natural persons who are using their own name or address in accordance with honest practice (Article 14(1)(a) EU Trade Mark Regulation, Article 14(1)(a) EU Trade Mark Directive).  Companies and businesses can no longer rely on this defence.   

On the other side of the coin, a reminder to brand owners is that they should not just focus on their “chances of success” prior to taking any registry or legal enforcement actions.  In this modern age of fast communication and social media influences, brand owners should also bear in mind any negative community considerations (Merpel: aka PR aka media attention aka common sense) arising from their actions. 

Taking this Gigi Dior case as an example, there has already been extensive news coverage on this dispute to date not just in the US but also in countries such as the UK, Australia and India, all of which are shedding a “David v Goliath” light on brand owners, for example: “Gigi deemed the lawsuit ridiculous”, “Porn star Gigi Dior has been slapped with a lawsuit by a French fashion house which claims she is damaging their business.” and “How did a group of very busy, very important lawyers find out about the existence of Gigi Dior – the self-proclaimed “super MILF” of OnlyFans?”

It is always difficult to balance between safeguarding one’s trade mark assets and other factors, but as Christian Dior puts it rather correctly “By being natural and sincere, one often can create revolutions without having sought them.”