Will the real Slim Shady please stand up?

Credits: Mateusz Bajdak (Unsplash)

Musicians, labels and merch partners: how to protect your brands in Australia

Recent developments in Australian trade mark law show that even global music icons cannot rely on fame alone to keep imitators out of the merchandising game. The most recent perhaps is 2026 ATMO 119, in which a Delegate of the Registrar of Trade Marks considered applications by Swim Shady Pty Ltd to partially remove two of Marshall B. Mathers III’s Australian registrations – SHADY and SHADY LIMITED – for non‑use in Classes 18 and 25, covering clothing, footwear, headgear and leather goods.

Use the trade mark or lose it

Eminem had Australian trade marks for the words SHADY and SHADY LIMITED, covering a big range of goods – including clothing, footwear, hats and bags (Classes 18 and 25), as well as other categories like music‑related products.

A local Australian company called Swim Shady Pty Ltd wanted to use “Swim Shady” for beachwear and accessories, so they attacked Eminem’s registrations on the basis of non‑use for the fashion and accessory classes only (18 and 25), not his core music and electronics categories.

P Australia looked at the evidence and decided that, during the relevant three‑year period, Eminem (or anyone under his control) hadn’t really used SHADY or SHADY LIMITED as trade marks on clothing, footwear, headgear or leather goods in Australia. The branding was mostly tied to his Slim Shady persona and music, and appeared as part of longer slogans rather than as a standalone product brand.

Because of that, the Registrar ordered that SHADY and SHADY LIMITED would lose protection for those fashion and accessory classes in Australia (but stay registered for other goods like music and electronics), which makes it easier for Swim Shady to keep using its name for beachwear.

Eminem’s evidence did show Shady‑themed merchandise, but not the kind of use the law needed to see for clothing and accessories in Australia. Most of the material related to slogans and logos like “SHADY vs EVERYBODY”, “THE SHADY BUNCH” and “WILL THE REAL SLIM SHADY PLEASE STAND UP”, or to the “Slim Shady” persona and song references, rather than the plain words SHADY or SHADY LIMITED used as the main brand name on products.

There were also only a few Australian invoices for Shady‑branded T‑shirts and jackets, and nothing showing the marks used on the broader range of goods claimed (such as bags, umbrellas or saddlery), under Eminem’s own control. Because that kind of clear, consistent trade mark use wasn’t shown for Classes 18 and 25, the Registrar decided those registrations should lose protection for fashion and accessories and stay only for goods where they are actually used. In practice, that clears a path for Swim Shady and similar brands to use “Shady”‑style names on beachwear in Australia, provided they don’t mislead people about any connection to Eminem.

What this meant was that, in the eyes of IP Australia, Eminem’s SHADY and SHADY LIMITED marks weren’t doing the job of a brand name for fashion and accessories in Australia during the key three‑year period.

Instead of seeing SHADY used clearly and consistently as the label on clothing, hats and bags, the Registrar mostly saw slogans, lyrics and persona‑based artwork where “Shady” was part of a longer phrase or design. There was also very little evidence of use across the full spread of goods claimed, and no solid proof that any merch use was under Eminem’s legal or quality control.

Thus, this means that the registrations were trimmed back to the types of goods where there was real use, and they lost protection for fashion and accessory classes 18 and 25. That, in turn, makes it easier for Swim Shady and other traders to keep using “Shady”‑style names for beachwear and similar products in Australia without running into those particular registrations.

The Delegate basically said that the Shady‑themed merch wasn’t close enough to the actual registered marks. In his words:

“Much of the evidence suffers from a defect because of the signs in relation to which merchandise is offered… [they] involve signs which I do not consider to be substantially identical with the Trade Marks. This is because they contain the addition of various word and device elements which substantially alter the identity of the Trade Marks. This includes the use of signs which themselves include the words, ‘Shady Demolition’, ‘I’M THE REAL SLIM SHADY’, ‘THE SHADY BUNCH’, ‘Slim Shady’, ‘SHADY VS EVERYBODY’, ‘WILL THE REAL SLIM SHADY PLEASE STAND UP’, ‘THE DEATH OF SLIM SHADY’ and ‘SHADY FOOTBALL”.

Catchy slogans and artwork built around “Slim Shady” don’t automatically count as using the simple word SHADY or SHADY LIMITED as a clothing brand – they capture the cultural moment but the Delegate saw most of them as decorative or referential, not real trade mark use of SHADY or SHADY LIMITED for clothing and leather goods.

As he put it:
“the majority of the asserted use relied on is not use as a trade mark. Rather, it is decorative use or use to describe the Opponent’s songs or albums”.

Your stage name, lyric or persona

For other artists and performers, the same idea applies. Just because your stage name, lyric or persona appears in:

• tour slogans
• album art
• meme‑style graphics
• long phrases on T‑shirts and hoodies

doesn’t mean you’re actually using the registered word mark itself as a clear brand name on the products in the way trade mark law expects.

If you’re a musician or celebrity and you want strong trade mark protection over your name on fashion and merch, you need to:

• put the registered mark (e.g. the exact word or logo) on tags, labels, product pages and packaging as the main brand;
• use it consistently on the goods and in marketing, not just inside lyrics or catchphrases; and
• make sure any label or merch partner using it is doing so under your control, so their use “counts” legally.

Otherwise, like in the SHADY case, your registrations can be cut back in those classes, and it becomes easier for other traders to use similar wording on clothing and accessories.

How can Sharon Givoni Consulting help?

In short, trade mark law will stand up for the “real” owner only if they stand up for their mark in practice – using it clearly, consistently and under proper control on the goods they claim. For musicians and their teams, now is the time to audit portfolios, tidy up licensing, and make sure your merch strategy gives your brand the legal backing it deserves.

How can Sharon Givoni Consulting help?

We can help you get the basics right so your music brand and merch are properly protected:

• File trade marks in the right classes for your name, logo and key merch items (like clothing, hats, bags and digital products).
• Check that you’re actually using those trade marks on your products and online store in a way the law recognises (as a clear brand, not just a lyric or slogan).
• Set up simple, clear agreements with labels, merch partners and collab brands so everyone knows who owns what and how the brand can be used.
• Keep basic records (photos of labels and tags, screenshots of product pages, sales info) so you can prove use if anyone ever challenges your trade mark.

Please note the above article is general in nature and does not constitute legal advice.

Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.