In the “season” of Trademark, I decided to share this trademark controversy that happened in 2019.
On June 25, 2019, Kim Kardashian revealed her new shapewear called Kimono Solutionwear which caused an uproar on Twitter. “I’ve been passionate about this for 15 years,” the reality star wrote. “Kimono is my take on shapewear and solutions for women that actually work.” [1].
However, this brand name shares its name with the kimono – a traditional Japanese garment with history tracing back as early as the 700s. In addition to naming her company after the traditional Japanese garment, Kardashian West, according to multiple outlets, applied to trademark the name in a specific font version of the word.[2]
This was met with backlash and accusations of cultural appropriation from people of Japanese heritage around the world, with many expressing their disapproval using the Twitter hashtag #KimOhNo. San Francisco-based Yuka Ohishi, who tweeted about the controversy, told CNN: “I was not very pleased by companies using the word kimono to market beach cover-ups and robes. And then Kim Kardashian went to a whole new level by simply using the word as a pun. Her line is not at all inspired by the Japanese kimono, pays no respect.”[3]
In a statement, published on Twitter, the Japanese trade minister Hiroshige Seko said that he would be sending officials for a meeting at the U.S. Patent and Trademark Office on July 9. Japan would be monitoring the situation in future, he added.[4]
The reality star finally succumbed and decided to launch her brand under a new name called SKIMS.
Now, my question is this: if Kim did not change her brand name could the Japanese community claim trademark infringement on the basis that Kimono is a traditional Japanese garment? Does IP law recognize culture?
[1] https://www.instagram.com/p/BzIjXc8g9VR/?utm_source=ig_embed&ig_rid=0206d5a9-7fe3-47d8-bea9-46f7a3b55326
[2] https://www.etonline.com/kim-kardashian-defends-trademarking-kimono-after-being-accused-of-cultural-appropriation-127701
[3] https://www.cnn.com/style/article/kim-kardashian-rename-kimono-intl-scli/index.html
[4] https://twitter.com/SekoHiroshige/status/1145890188104622081
Communications Law
Hi Mosunmola! I was inspired by your post about the trademark controversy between Kim Kardashian and Japanese culture. It recalls me of a similar issue in China. Not long ago in China, there was also a hot controversy related to IP law between Dior and Chinese traditional costume, namely Mamianqun. It seems to me that the culture preservation in IP law is a long-lasting controversial topic, which raises my curiosity.
Introduction of Mamianqun from Wikepedia
The term mamianqun (马面裙) is composed of three Chinese characters: ma 马, which literally means ‘horse’; mian 面, which literally means “face”; and qun 裙, which literally means “skirt”. It is a type of traditional Chinese skirt worn by the Han Chinese (the majority ethnic of Chinese people) women as a lower garment item in Hanfu (Han Chinese costume) and is one of the main representatives of ancient Chinese-style skirts. It originated in the Song and Liao dynasties (around 1000-1300 A.D.) and became popular due to its functionality and its aesthetic style.
The mamianqun is composed of two overlapping panels of fabrics which wrap around the lower body. Each of these two panels were identical and formed half of the skirt, which were then sewn together with a single waistband creating the overlapping front. A mamianqun is a total of four flat and straight panels are known as qunmen (裙门; ‘skirt door’) or mamian (马面裙; ‘horse face’); there are two flat panels at the right and left side of each panel of fabric. When worn, only two out of the four flat panels are visible on the wearer’s body; the visible panels are seen located at the front and back of the skirt; The mamianqun were typically tied with ties which extended beyond the skirt’s width at the waistband.
Due to the unique overlapping construction of the skirt, there were openings at the front and back of the skirt which facilitated horse-riding; this characteristic would also allow for greater freedom of movement when walking, which was necessary for Chinese women who had bound feet who were walking with small and shuffling steps; the need for this kind of functional skirt when walking did not arise until the Song dynasty when foot binding became popular.[1]
Dior’s newly designed skirt and comparison
French luxury fashion house Dior has come under heavy criticism in China after a flared skirt from its Fall 2022 collection branded as its ‘hallmark silhouette’ was found to closely resemble Mamianqun. Chinese netizens and official media outlets such as Global Times and People’s Daily are accusing the brand of ‘copying’ and ‘cultural appropriation’ of a 10th century garment.[2]
Similar to Mamianqun, the ‘hallmark silhouette’ new skirt is also not closed, it also can be seen as two overlapping pieces of fabric fixed on the belt, and the skirt is fixed by tying the belt. Though the color, material and pattern of the skirt are different, the common style of the construction lead to criticism among Chinese netizens. While most Chinese netizens accused it of the “culture appropriation”, saying Dior is being disrespectful to the ancient culture though Dior finally canceled this product on their website (without apology), which we are not going to focus in this article, some of the fashion designers and lawyers are noticing issues in the IP law domain. Some argued about the copyright of the skirt while others are concerned about whether a patent can be established by Dior, to state the monopoly of exploitation of the skirt of this style.
Copyright law issue
As Berne Convention set out, authors who are citizens of any of the member states of the Union, or who publish their works for the first time in any of the member states, shall enjoy protection in the other member states in the same way as each country accords to works of its own nationals. Canada, France and China are all contracting nations of the Berne Convention, so are the skirt created by Dior and Mamianqun copyrightable in Canada?
The skirt created by Dior is arguably copyrightable in Canada. First, it can fall into the category of “artistic craftsmanship”, which is one type of the artistic works as the Copyright Act regulated. The design absolutely requires skill and judgment of the designer, and can be an expression of ideas as a whole.
The Mamianqun, may also be copyrightable. But it is not the Mamianqun as a style copyrightable, it is the specific pieces of designs whose designers are still living or passed away within 30 years.
Can the designer of Dior sue the new Mamianqun designer for the infringement or vice versa? Definitely they can, but they may not win the litigation, since the construction of the style is hard to be proved as the substantial part of the expression of the idea, which is the most vital element to prove the infringement of the copyright.
Patent law issue
While the copyright issue seems not disputable, if Dior tries to apply for a patent, more heated controversy will definitely be triggered, since as long as the application is approved, it will lead to adverse consequences for the legal status of Mamianqun. Once the patent of the construction of the skirt is established, Dior can hold the exclusive right for this construction. Producing such kinds of Mamianqun without the agreement will be prohibited.
Thus, the first main issue here is whether the skirt Dior designed can be patentable. According to the Patent Cooperation Treaty, Dior can file an international application. A PCT application does not itself result in the grant of a patent, since there is no such thing as an “international patent”, and the grant of patent is a prerogative of each national or regional authority. In Canada, the requirements of patentability contain utility, novelty and non-obviousness. It will open for public inspection after eighteen months, and the Patent Office can reject the application. So in the stage of application, the public may raise objections for the application since there are Mamianqun existing in the world. The application will be examined, and as long as there is enough evidence of no novelty can be found in Dior’s design, it will fail the application.
Once the patent is established somehow, the patent right may be invalidated at the instance of the Attorney General of Canada or at the instance of any interested person. Assume that the Attorney General will not pay attention to Mamianqun, as it is a foreign culture, only interested people can invalidate the patent. Mamianqun lovers or Chinese traditional culture enthusiasts are not interested, only Mamianqun producer and retailer can be an interested person (s2), because they are actual/potential infringers and may “use” this patent.
[1]https://en.wikipedia.org/wiki/Mamianqun#cite_note-:11-12
[2]