Only a few months after performing at the AFL Grand Final, pop star Katy Perry has made Australian headlines again, this time for winning a long-running trade mark dispute with a Sydney fashion designer bearing a similar name.
Sydney designer Katie Jane Taylor is the owner of the KATIE PERRY trade mark registration in Australia, and sells clothes under her birth name Katie Perry. In October 2019 she sued the singer Katy Perry because the performer was selling her own merchandise.
On 22 November 2024, the Federal Court overturned a finding that Katy Perry infringed Ms Taylor’s KATIE PERRY trade mark. Katy Perry was able to rely on the ‘own name’ defence to infringement and succeeded in her action to cancel the KATIE PERRY trade mark registration.
The KATIE PERRY trade mark registration has not yet been cancelled, meaning Ms Taylor can still seek leave to appeal to the High Court. The case so far shines a light on the tricky world of trade marks, and reveals some timely lessons for businesses.
It is possible to co-exist
Ms Taylor rejected Katy Perry’s co-existence offer and then commenced infringement proceedings against Katy Perry. Having found that Ms Taylor knew of Katy Perry and her international reputation when filing her trade mark application, the Court criticised Ms Taylor’s decision not to entertain a co-existence arrangement.
Learning: In many instances a co-existence arrangement is a perfectly suitable commercial resolution of a trade mark dispute. In saturated brand markets, two or more parties can quite happily co-exist by agreeing to terms of use and staying in their own brand lane. To avoid lengthy and costly course proceedings, it’s imperative to consider settlement outcomes before proceeding with infringement actions. Further, the Court may also look upon an unwillingness to resolve a matter out of court unfavourably.
Be specific about your trade mark
In the primary judgment, Katy Perry was found liable for trade mark infringement with respect to clothing only. On appeal, Ms Taylor argued that the judge had interpreted the specification too narrowly and should have also found that footwear, headgear, caps, hats and headbands fall with the KATIE PERRY trade mark registration. Therefore, Katy Perry’s sales of these items also infringed her trade mark. The Court disagreed and focused on the dictionary definition of “clothes” which ordinarily apply to garments that cover the body, but not the head or feet, the Court concluded that Ms Taylor’s registration did not extend to these additional items.
Learning: It is critical when applying for a trade mark to clearly specify the goods and services for which protection is sought – don’t rely on assumptions or leave any room for ambiguity.
Owning the ‘own name’ defence
The Court provided clarity around the ’own name’ defence, confirming that protection is given to the name by which that person is usually known. It does not matter if that person is known by an adopted name, as is the case for Katy Perry (she was born Katheryn Hudson). In addition to this nuance, the Court rejected Ms Taylor’s argument that Katy Perry could not rely on the defence because she had assigned her Australian trade mark rights to her company, Killer Queen LLC.
Learning: The ‘own name’ defence should not be overcomplicated. If a person’s allegedly infringing conduct was use in good faith of their name, the defence is available.
Well-known trade marks have reach
Katy Perry argued that the KATIE PERRY trade mark registration should be cancelled because of her reputation in the KATY PERRY mark in Australia, before the filing date of Ms Taylor’s trade mark registration (29 September 2008). In the primary judgment, the Court wasn’t satisfied that Katy Perry’s reputation extended beyond music to clothing and denied Katy Perry’s cross-claim to cancel the KATIE PERRY trade mark registration.
The Federal Court disagreed – it pointed to ample evidence that it is common for celebrities to launch clothing lines, and that Ms Taylor had conceded this in cross examination. Further, the absence of any confusion between the parties’ marks is not determinative when considering a cancellation action; the factual circumstances will often dictate whether such evidence exists. In this case the small extent to which Ms Taylor had made use of the KATIE PERRY trade mark was relevant.
Learning: Don’t underestimate the reach of a well-known mark – even an international one. Be aware that reach can extend to ancillary goods and services (in this case Katy Perry’s merchandise – not just her entertainment services).
For more information about protecting and enforcing your brands, contact the Source team today.
