Eminem Challenges "Swim Shady" Trade Mark

Hip hop superstar Eminem has commenced legal proceedings against Sydney beach umbrella brand Swim Shady,  alleging trade mark infringement.

The 53-year-old rapper, claims that Swim Shady’s registered trade mark could mislead consumers into believing its beach accessories are connected to his globally recognised” Slim Shady” persona.

According to court filings, an application for the Swim Shady trade mark was lodged in Australia in March 2024. Eminem contends that this infringes on his existing trade mark rights associated with the name “Slim Shady”, an angry character he created in 1997 on his Slim Shady EP that has since become synonymous with his commercial identity.

By contrast, Swim Shady sells beach umbrellas, towels, bags and summer accessories.

So how did a seemingly innocent name for a small business brand catch the ire of one the world’s most famous celebrities?

The Dispute

In December 2024, former sponsorship executive at South Sydney Rabbitohs, Jeremy Scott, and his partner, Elizabeth Afrakoff, launched Swim Shady, filing their trade mark application with IP Australia earlier that year. What appeared to be a straightforward business launch evolved into a trade mark dispute. According to IP Australia’s trade mark register, Swim Shady is undergoing a challenge which may result in its removal from the registry.

In October 2024, Marshall Mathers III, also known as Eminem, filed formal opposition through IP Australia, challenging the trade mark registration. The rapper’s legal team has also pursued proceedings in multiple jurisdictions, filing with the US Patent and Trademark Office to cancel the Swim Shady trade mark, as well as launching objections to the brand’s UK trade mark applications.

Petty or Protective?

It’s worth noting that while celebrities acting to protect their trade marks can seem excessive in the court of public opinion and a multimillionaire artist challenging a small local business over a pun might raise eyebrows, however brand owners such as Eminem may feel compelled to defend their marks or risk losing rights to them.

IP Australia defines a trade mark as a sign that can uniquely identify the goods or services of one business from those of another. Trade marks can be registered or unregistered, with registration offering significant legal protections. Under the Trade Marks Act 1995 (Cth), a trade mark may be infringed if another mark is substantially identical or deceptively similar to an existing registered mark, which may be confusing for consumers.

In Killer Queen, LLC v Taylor FCAFC 149, pop star Katy Perry won an appeal in November 2024 in a lengthy trade mark court battle against Sydney fashion designer Katie Jane Taylor, who uses her birth name to design and sell clothes under the trade mark brand “Katie Perry.” The designer appealed to the High Court of Australia, where a decision is yet to be handed down.

Legal Protections

The Australian Consumer Law provides additional protection through sections 18 and 29 of the Australian Consumer Law (ACL), which prohibit misleading or deceptive conduct and false representations about goods or services. These provisions operate independently of trade mark registration, meaning businesses can face liability for conduct that misleads, or is likely to mislead, consumers about commercial associations or endorsements—even where no registered trade mark exists.

Eminem’s lawyers further allege that Swim Shady’s choice of name amounted to bad faith. The Australian company, for its part, maintains it has followed all proper registration processes and plans to defend its intellectual property rights.

Defences

Section 122 of the Trade Marks Act 1995 (Cth) outlines some defences to trade mark infringement, including:

• use of a registered trade mark by its owner in good faith for business or personal names;

• use of a sign in good faith indicating a characteristic of goods or service, and;

• use in good faith to describe the nature, quality, or intended purpose of goods or services.

For a defence to succeed, especially that of “good faith,” courts will assess whether the business took reasonable steps to check for existing trade marks and genuinely chose its name without intent to confuse consumers.

No Laughing Matter

Even trade marks that seem harmless or humorous can ignite a legal dispute, especially if there are echoes of a famous brand. What starts out as perhaps an innocent play on words can escalate.

If you are a business, before launching a name, logo or catch phrase it is best to seek professional advice to navigate these complexities, so you can still maintain your creativity.

The content in this Article is intended only to provide a summary and general overview on matters of interest. It is not intended to be comprehensive nor does it constitute legal advice. It should not be relied upon as such. You should seek legal or other professional advice before acting or relying on any of the content.

ABOUT THE AUTHOR

Naomi Shivaraman  has been an award winning journalist and producer for 25 years. She joined BlackBay as the team’s Legal Affairs Strategist, a role created to utilise her combined legal and media strategy skills, helping clients and stakeholders navigate the court of public opinion.

Not only does she assist the team in a paralegal capacity on complex litigation matters, but she also provides reputational, media and communications counsel. For the past few years, Naomi has combined her law studies with a full-time career. Naomi will finish her Bachelor of Laws degree at Macquarie University next year.