Will the real Swim Shady please stand up? Lessons learnt from Eminem’s recent trademark battle.

American rapper Eminem (whose legal name is Marshall B Mathers III) joins Kanye West and Katy Perry in a star-studded lineup of recent trademark disputes in the Australian IP space.

The dispute was between Eminem and the small Australian beachwear start-up named ‘Swim Shady’, the name of which he alleges may confuse the public of a false association with his brand and alter ego, which you may know as ‘Slim Shady’,

Background

Swim Shady filed non-use application against Eminem’s ‘Shady’ and ‘Shady Limited’ trademarks (the trademarks), which are registered on the Australian Trademark Register, arguing they have not been consistently used for all the purposes for which they are trademarked during the relevant period,¹ which in this instance, was 13 December 2021 to 13 December 2024.

Australian Trademark law stipulates that a non-use application may be granted if the ground is established that the trademark has not been used (or used in good faith) in Australia by the registered owner in relation to the relevant goods or services for a continuous 3-year period.²

Authorised use

For reasons not discussed in the decision and unknown to the public, the trademarks are registered under Eminem’s government name – Marshall B Mathers III, as an individual, rather than under his management company, record label or other corporate body.  A quick search of the IP Australia registry reveals this is quite the anomaly amongst artists – with Taylor Swift, Rihanna and Kylie Minogue’s trademarks registered to corporate entities rather than themselves as individuals.

If the use of the trademark is not used by the owner themselves, the owner of the trademark must show that the use was ‘authorised’. In this instance Eminem bore the onus of demonstrating that such use of the trademark by his label, Interscope Records, was authorised use.

During the hearing, Counsel for Eminem alleged that he was in control of the Eminem Website, Shady Records Website and associated social media accounts. However, the Hearing Officer comments that the use of the trademark presented to him appears to likely be used by Interscope records, rather than Eminem himself.

In the hearing, the Hearing Officer referred to the decision on Lodestar Anstalt v Campari Australia LLC which dealt with a licencing agreement. In this decision, the Full Court considered whether use by a person as a purported licensee was in those circumstances ‘authorised use’. The Full Court held that bare contractual power was insufficient, and what was actually required was active control.³

Counsel for Eminem bit back, arguing that it was unrealistic to expect Eminem to exercise a high level of control over these enterprises. Counsel argued that he need not have ‘to stand outside the concert and sell the merchandise to consumers himself or go and inspect the sewing machines that are used to make the shirts and the hoodies and the caps that he sells on his various websites’.⁴

The Hearing Officer stated that the submissions on this point appear to invert the onus of the question.⁵ He emphasises that the matter of control is in fact, ‘a question of fact and degree’.⁶ The Hearing Officer agrees that the Act calls for a common sense application of the principles, however, a finding that is reasonably based, calls for evidence from the party that bears the relevant onus.⁷

The following was said regarding Eminem’s relationship with his record label, Interscope Records:

“..the Opponent’s record company manages the distribution of goods on his behalf. The Opponent further clarifies that Interscope Records is the record company of the Opponent. There is no explanation for the specific legal relationship between the Opponent and, for example, Interscope Records insofar as control is concerned. How the Applicant would investigate such a bare statement and such internal matters is difficult to contemplate. This is part of the reason that the onus sits with the Opponent as to these matters.

..Without more, I cannot reasonably assume that the Opponent has exercised control over the use of the Trade Marks..

… (evidence presented at the hearing).. at its highest confirms some permission or unspecified association between the Opponent and the relevant social media account. It does not establish actual control for the purposes of use of a trade mark under the Act. Just because there may be an association between a user of a trade mark and the registered owner, here a performer and his persona, that does not necessarily mean that there is actual control for the purposes of the Act. It is possible, and even common, that some performers relinquish, sell or alter the legal, financial and actual control by contractual agreements with companies, such as record companies…

..I agree that it is not expected that the Opponent, who is of widespread repute, would necessarily be vending goods himself. However, what is expected, in the absence of specific examples of use of a trade mark by a registered owner, are details as to whatever common sense arrangement involving control between a registered owner and those who are making use of the trade mark day today.

Such evidence has not been placed before me.”

The above quotes are highly important and insightful. The Hearing Officer accepts that, obviously, a celebrity would not personally sell their own merchandise. However, if third parties are using the trademark, the court needs to be presented with evidence showing the arrangements under which the celebrity controls that use. Because no such evidence was provided, the Hearing Officer cannot conclude that the use by those third parties constitutes use by the registered owner.

Comments about fame – Registrar’s discretion

Registrars have the right to exercise their discretion under s 101(3) of the Trade Marks Act 1995 (Cth) to allow the registrations to remain on the Register despite the failure to prove use or authorised use of the marks. The Hearing Officer contemplates this towards the end of the judgement.⁸

Eminem’s counsel placed significant weight on the worldwide fame of his client when it came to the trademark dispute. The Hearing Officer accepted that Eminem is extremely famous and that many people would recognise the persona “Slim Shady” and associated slogans and lyrics. However, the relevant question was not the reputation of Eminem as a performer, but whether the trademarks ‘SHADY’ and ‘SHADY LIMITED’ had a reputation as trademarks for the registered goods (particularly clothing, footwear and class 18 goods).

The Hearing Officer found that the evidence showed reputation in the ‘Slim Shady’ persona, rather than in ‘SHADY’ or ‘SHADY LIMITED’ as badges of origin for merchandise. Most uses of the word ‘Shady’ appeared in larger phrases, logos, album titles, song titles or slogans, which primarily referenced Eminem’s music and persona rather than indicating the commercial origin of goods. There was not the kind of widespread standalone trademark use that existed in cases where the discretion had previously been exercised.

The Hearing Officer also noted that there was virtually no evidence of use for many of the registered goods, particularly numerous class 18 goods such as saddlery, walking sticks, umbrellas and similar items. The evidence, at its highest, showed use only in respect of a limited range of merchandise such as T-shirts, jumpers, jackets and caps. This weakened any argument that consumers would be confused if the registrations were removed. The word ‘Shady’ in itself could be considered highly descriptive for items such as umbrellas and parasols, which further reduces the chance of confusion.⁹

The Hearing Officer emphasised that a performer’s fame alone is not enough. Even if Eminem has a global merchandising business, the evidence did not establish that consumers would understand goods bearing the marks ‘SHADY’ or ‘SHADY LIMITED’ to originate from him as a trader. The evidence presented by Eminem’s counsel went to the reputation of a musician and persona, rather than to trademark significance in the registered goods.

Finding

The Hearing Officer found the following:

• ‘Accordingly, I am not satisfied on the balance of probabilities that the Opponent has used the Trade Marks, as the registered owner, in the Relevant Period for the Registered Goods. Further and for clarity, I am unable to conclude that the Opponent, as the registered owner, exercised quality, financial or other relevant control over the potential use that has been shown allegedly by Interscope Records or any other person.’¹⁰

He also directed that within one month of the date of this decision, the partial removal of the trademarks must occur – meaning ‘SHADY’ and ‘SHADY LIMITED’ are still registered, but under much narrower categories within classes 18 and 25.¹¹

Eminem lost this trademark battle and was ordered to pay the other parties’ costs.¹²

Important takeaways

This case reminds us of the various important aspects of trademark registration you should consider whether you’re a brand, artist, musician or anything in-between:

You must genuinely be using the trademark!

• Notoriety is not guaranteed to shield a trademark from a non-use challenge, especially if genuine, controlled use in the relevant classes during the relevant period cannot be presented – even if you’re the highest selling rapper of all time!¹³
• Do not oversaturate the register if you do not intend to use the trademark for that purpose.

Consider who is in control:

• In circumstances where merchandise is sold through a label or licensee, the registered owner must establish that it maintained adequate control. Licencing agreements are vital if the trademark is not being used solely by the owner.

Proactive registration and considering your relevant classes:

• A vital factor in IP Australia’s decision was the absence of a ‘SLIM SHADY’ registration at the time Swim Shady launched – only ‘SHADY’ and ‘SHADY LIMITED’. Early registration of distinctive brand assets such as trademarks for businesses, celebrities and character-driven brands can provide greater certainty and strengthen enforcement options if a dispute arises.
• Eminem and his team should have considered what words or marks carried his reputation and good will, as the protection of the ‘SLIM SHADY’ brand itself may have placed Eminem in a stronger position in this dispute.

If you’re looking for advice on registering a trademark, defending a non-use application or protecting your valuable intellectual property – reach out to Lavan’s Dispute Resolution and Investigations Team today.

Thanks to solicitor Isabella Beilin for her research and contribution to this article.

Disclaimer

The information contained in this publication does not constitute legal advice and should not be relied upon as such. You should seek legal advice in relation to any particular matter you may have before relying or acting on this information. The Lavan team are here to assist.

Footnotes

[1] Defined in Trade Marks Act 1995  s 92 (4)(b).

[2] Ibid.

[3] Marshall B Mathers III v Swim Shady Pty Ltd [2026] ATMO 119 (1 July 2026) [38].

[4] Ibid [39].

[5] Ibid [40].

[6] Ibid [40].

[7] Ibid [42].

[8] Ibid [56] – [65].

[9] Ibid [59]

[10] Ibid [45].

[11] Ibid [66].

[12] Ibid [69].

[13] Guinness World Records, Biggest-selling rap artist from albums (USA) (Web Page, 8 March 2022) <https://www.guinnessworldrecords.com/world-records/709252-biggest-selling-rap-artist-from-albums-usa>. Please note – Lavan is by no means endorsing him as the greatest hip-hop artist of all time! No shade, Slim Shady.