Katie Perry Australian clothing brand loses out in trade mark dispute with pop superstar Katy Perry
The Full Federal Court has handed down the decision Killer Queen, LLC v Taylor [2024] FCA 364 in which Katheryn Hudson (better known by her stage name ‘Katy Perry’) was successful in overturning a decision that she (and her associated corporate entities) had infringed a registered trade mark for ‘Katie Perry’ owned by an Australian clothing designer, Katie Taylor (formerly Katie Perry before marriage).
This case involved an allegation Katy Perry had infringed the trade mark ‘Katie Perry’, which is a registered trade mark for clothes owned by Australian fashion designer Katie Taylor.
On appeal to the Full Federal Court, it was held that Ms Taylor’s mark should be cancelled on the basis that at the time Ms Taylor was seeking registration for her trade mark, Katy Perry had already obtained reputation in the trade mark ‘Katy Perry’ with respect to music and performance, and, that because of this reputation, there was likelihood of consumers being misled or deceived.
The legal arguments and decision
The general purpose of the Register of Trade Marks is to allow consumers to view publicly available branding information which reflects the ‘real world’. It is for this reason that the Trade Marks Act gives priority to traders who have gained a reputation in Australia for particular trade marks over those who have sought to register a similar mark at time after this reputation has been developed.
Section 88(1)(a) of the Trade Marks Act 1995 (Cth) (Trade Marks Act) allows for the cancellation of a registered trade mark where registration could have been opposed for any of the grounds available under the Trade Marks Act. Katy Perry alleged that:
as at the date Ms Taylor filed her application (29 September 2008), Katy Perry had a reputation in Australia for the trade mark ‘Katy Perry’; and
because of this reputation, Ms Taylor’s use of the trade mark ‘Katie Perry’ with respect to clothes would be likely to cause consumers to be misled or deceived.
At first instance, the Primary Judge found that, as at 29 September 2008, Katy Perry had a reputation in Australia, but only with respect to music and performance services. This reputation did not extend to clothes. In so finding, the Court found that Katy Perry had been recognised in Australia as a musician and performer, but had not yet launched her clothing merchandise. Therefore, consumers were not likely to be misled or deceived.
On appeal, it was held that the Primary Judge erred in concluding that Katy Perry did not have reputation with respect to clothes, by ignoring ‘the common practice of pop stars to sell merchandise including clothing at concerts and to launch their own clothing labels’. The Full Court referred to Ms Taylor’s own example given in evidence where she observed that “now obviously there’s like, Rihanna and – they’ve kind of exploded”. Ms Taylor’s comments were, in a way, an admission that other pop stars often sell fashion as their success grows.
In other words, Katy Perry’s reputation as a pop musician extended to the sale of clothes under the trade mark ‘Katy Perry’ and that this reputation preceded the application for ‘Katie Perry’. Accordingly, there was a likelihood that consumers seeing the ‘Katie Perry’ clothing line would be misled or deceived as to their origin.
Consequently, Ms Taylor’s ‘Katie Perry’ trade mark was cancelled and Katy Perry could therefore not have infringed this trade mark. Ms Taylor will have an opportunity to appeal this decision to the High Court.
The take home message
It is important at all stages of trade mark ownership, from early use and designing the brand right through to registration and alleging trade mark infringement by another, to ensure that your brand and your registration is solid and is not liable to challenge. In this case, had Ms Taylor applied for her mark before Ms Hudson developed her reputation, then this may have been sufficient for Ms Taylor to keep her registration.
The Court recognised that the case was an unfortunate one, in that “two enterprising women in different countries each adopted their name as a trade mark at a time that each was unaware of the existence of the other.” Ms Taylor is reported as having said “My fashion label has been a dream of mine since I was 11 years old and now that dream that I have worked so hard for, since 2006, has been taken away."
Obtaining legal advice at all stages of the trade mark process, from coming up with the initial brand to alleging infringement, is vital to brand protection. It was a critical aspect of the case that unregistered reputation in Katy Perry’s trade mark resulted in the cancellation of Ms Taylor’s mark.
At Harwood Andrews, our specialist team of intellectual property lawyers with local knowledge can assist in providing the advice you need to protect your brand.
Michelle Dowdle
Principal Lawyer
T 03 9611 0114
E mdowdle@ha.legal
Thomas Howell
Lawyer
T 03 5226 8526
E thowell@ha.legal
