“This case is an unfortunate one in the sense 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.”

The Full Federal Court 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 (Ms Taylor’s maiden name was Perry).

At first instance, Katie Taylor was successful in obtaining an order for damages and additional damages on the basis that Katy Perry had infringed the trade mark ‘Katie Perry’, which is registered for clothes.

On appeal to the Full Federal Court, the court held that Ms Taylor’s mark should be cancelled on that 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 if Ms Taylor would use her mark. Given Ms Taylor’s trade mark was cancelled, she could not rely on this registration to obtain an order for trade mark infringement.

Reputation in a trade mark (the technical part)

The general purpose of the Register of Trade Marks is to allow consumers to view publicly available branding information which reflects the ‘real world’. Accordingly, protection will be given (generally) to traders who have either used or gained reputation first in a particular trade mark, and the Register is designed to show this.

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 of the trade mark could have been opposed for any of the grounds available under the Trade Marks Act. One such ground is under section 60, which provides that registration may be opposed where:

1. another trade mark has acquired reputation in Australia; and

2. because of that reputation, the use of the mark being sought for registration would be likely to deceive or cause confusion.

Accordingly, the Court considered whether:

1. as at the date Ms Taylor filed her application (29 September 2008) did Katy Perry have reputation in Australia for the trade mark ‘Katy Perry’; and

2. if Katy Perry did have this reputation, would Ms Taylor’s use of her trade mark ‘Katie Perry’ with respect to clothes 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 did have reputation in Australia, but not with respect to clothes. By this date, Katy Perry had been recognised in Australia as a musician and performer, but had not yet launched her clothing merchandise. Therefore, the Primary Judge found 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’ by Ms Taylor. Accordingly, there was a likelihood that consumers seeing the ‘Katie Perry’ clothing line would be misled or deceived as to their origin.

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.

What you need to know

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, Ms Taylor’s attempt at maintaining registration of her Australian trade mark with respect to clothes was bested by Ms Hudson’s reputation as a pop signer.

Obtaining legal advice as to registerability, ownership, use and reputation of trade marks is vital to brand protection. In this case, Katy Perry’s reputation in Australia preceding Ms Taylor’s was a critical component of the decision.

At Sladen Legal, our dedicated team of intellectual property specialists can help you to obtain the advice for all stages of your trade mark journey.

Michelle Dowdle
Principal Lawyer
T +61 3 9611 0114 | M +61 408 674 256
E: mdowdle@sladen.com.au

Thomas Howell
Lawyer
T +61 3 5226 8526
E: thowell@sladen.com.au