According to an intellectual property attorney, the recent ruling by the Australian Trade Marks Office in the case involving American rapper Eminem demonstrated the gap between celebrity and celebrity brand.

“The Australian Trade Marks Office’s decision in Marshall B. Mathers III v. Swim Shady Pty Ltd delivers a pointed lesson on the gap between celebrity and celebrity brand, and on how exacting the Trade Marks Act 1995 can be when it comes to proving genuine use,” said Natasha Burns, partner at Allens Patent & Trade Mark Attorneys in Melbourne. Marshall B. Mathers III is the real name of Eminem.

The ruling, issued in July 2026, favoured the Australian beachwear brand, Swim Shady.

The singer’s camp had opposed the brand name Swim Shady, stating that the public might think the products being sold under the brand were connected to the rapper-songwriter whose alter ego is dubbed Slim Shady.

The company then sought the partial removal of Eminem’s registered marks SHADY and SHADY LIMITED, in classes covering clothing, footwear, headgear and leather goods, due to non-use.

Eminem opposed this move by the Sydney-based company and presented evidence of use. Among these were website excerpts, sales invoices and material relating to a Nike “Air Shady” collaboration.

However, the Delegate of the Registrar of Trade Marks decided against the singer and ordered the partial removal of Shady and Shady Limited from the contested goods in classes 18 and 25.  

Burns revealed that the delegate identified two problems with the opponent’s case, which she termed “fatal.”

One was that most of the signs presented in the evidence, namely THE SHADY BUNCH, SHADY VS EVERYBODY and SHADY FOOTBALL were not substantially identical to the registered marks SHADY and SHADY LIMITED. “The delegate treated this material as invoking the performer or his songs rather than functioning as a badge of origin for merchandise,” Burns said.

The second “fatal” problem was that the opponent could not show that the use was his own or authorized under his control. The merchandise represented by SHADY BUNCH, SHADY VS EVERYBODY and SHADY FOOTBALL were sold through channels linked to Interscope Records. “Applying Lodestar Anstalt v. Campari America LLC, the delegate found that a bare assertion of distribution management fell short of the active control the authorities demand,” said Burns.

“Finding neither use nor authorized use in the relevant period, the delegate declined to exercise the residual discretion under section 101(3) to keep the marks on the register. He held that reputation as a performer did not translate into reputation in the marks as badges of origin for clothing and accessories,” Burns added.

This decision is now on appeal before the Federal Court of Australia. According to Burns, this appeal is not confined to legal error; rather, it is a hearing de novo. This means the court decides from a fresh slate and hence is not bound by the previous findings. The court may also receive evidence that was not presented before the Registrar of Trade Marks. “This gives Mathers a genuine opportunity to close the evidentiary gaps identified at first instance,” Burns noted.

Discussing the key takeaways from the case, Burns said: “For brand owners who route merchandising through related entities – record labels, licensees, distributors – this decision is a reminder that non-use proceedings are won and lost on the paper trail proving control, not on the strength of the underlying reputation. Contemporaneous documentation of quality, financial or operational control over the entities dealing in the goods is not a formality; it is the difference between keeping and losing a registration.”

- Espie Angelica A. de Leon