In a dispute that has spanned more than a decade, the High Court of Australia has delivered its final word in the trade mark battle between global pop star Katy Perry and Australian fashion designer Katie Perry. The decision provides important guidance on the role of reputation in trade mark law and reinforces the importance of securing intellectual property rights at an early stage.
Background
Australian fashion designer Ms Katie Taylor used her birth name, Katie Perry, as the brand name for her fashion business. Her trade mark KATIE PERRY has been protected in relation to clothing since September 2008.
Ms Katheryn Hudson has been using the stage name ‘Katy Perry’ since 2002 in connection with her music career and related merchandising activities. In or around June 2009, Ms Hudson had applied for the trade mark KATY PERRY in Australia under Classes 9, 25 and 41, however, amended the application to remove Class 25 for clothing in the same year after receiving an adverse report from IP Australia indicating a close resemblance to Ms Taylor’s KATIE PERRY mark in that category.
The trade mark dispute between Ms Hudson and Ms Taylor commenced in May 2009 when Ms Hudson issued a cease-and-desist letter to Ms Taylor to withdraw the application for the KATIE PERRY trade mark and refrain from selling clothes marked with the trade mark KATIE PERRY. The purpose of the letter was to enable Ms Hudson to sell merchandise bearing the KATY PERRY name and pursue trade mark protection in Australia without creating consumer confusion.
Ms Taylor and Ms Hudson continued to negotiate between May and August 2009 including a proposed co-existence agreement, however, the parties failed to reach an amicable agreement on the dispute, and it was Ms Hudson that ultimately decided to stop pursuing the dispute against Ms Taylor.
Between 2009 and 2019, Ms Hudson continued Australian tours where KATY PERRY branded merchandise was sold through her associate entities Killer Queen, LLC, Kitty Purry and Purrfect Ventures (collectively, the Related Entities). Once becoming aware of these actions, Ms Taylor commenced proceedings in the Federal Court of Australia in October 2019 against Ms Hudson and the Related Entities for trade mark infringement. Ms Hudson cross-claimed on the basis that Ms Taylor’s trade mark should be cancelled because it was likely to deceive or confuse the public as a result of Ms Hudson’s reputation through her stage name.
Federal Court Decision
In April 2023, the Federal Court in the primary judgment (Taylor v Killer Queen, LLC (No 5) [2023] FCA 364) found that Ms Hudson had infringed Ms Taylor’s KATIE PERRY trade mark by advertising and selling merchandised clothing in Australia and dismissed the cross-claim to cancel Ms Taylor’s KATIE PERRY trade mark. The Court acknowledged that Ms Hudson’s reputation extended to music and entertainment but not clothing.
Full Federal Court Appeal
In November 2024, the Full Federal Court on appeal (Killer Queen, LLC v Taylor [2024] FCAFC 149) overturned the primary judgment. The Full Federal Court found that Ms Hudson had already established a reputation in Australia under the name ‘Katy Perry’ and Ms Taylor’s use of the trade mark would likely deceive and cause confusion within the Australian marketplace. The Court also set aside the primary judge’s decision made in relation to the cross-claim, in turn ordering that Ms Taylor’s trade mark registration be cancelled.
High Court Decision
In a closely divided 3-2 decision, the High Court ultimately ruled in favour of Ms Taylor and reinstated her trade mark registration. In reaching that conclusion, the Court considered three key issues:
- Did Ms Hudson’s trade mark acquire a reputation in Australia as a trade mark under section 60 of the Trade Marks Act 1995 (Cth) (the Act)?
- Whether as of 20 December 2019, being the date Ms Taylor filed her cross-claim, the use of Ms Taylor’s trade mark was likely to deceive and cause confusion within the meaning of section 88(2)(c) of the Act?
- If either of the above grounds are established, and Ms Taylor establishes that the need for rectification did not arise from her own fault or act, whether the Court under its discretion could apply section 89 of the Act?
Section 60 of the Act
While addressing the first question, the High Court accepted that Ms Hudson had acquired a substantial reputation in Australia prior to the priority date of Ms Taylor’s trade mark, being 29 September 2008 when Ms Taylor filed her application for the trade mark. However, the High Court emphasised that the reputation was primarily in relation to music and entertainment services, rather than in clothing and fashion. While celebrities commonly expand their brands into the fashion industry, the Court held that this fact alone did not establish that Ms Hudson’s mark had acquired a reputation in Australia for clothing and fashion.
The High Court explained that, in addressing this issue, it was necessary to consider whether, as at the priority date, a reasonable number of consumers would wonder whether clothing sold under Ms Taylor’s mark was connected with Ms Hudson, having regard to Ms Hudson’s reputation in the Australian market. Consumers would expect any connection to Katy Perry’s songs, tours or other promotional activities to be clearly indicated before concluding that the brand was connected to Ms Hudson. In the absence of such an indication, the Court found there was no real and tangible danger of confusion arising from Ms Taylor’s trade mark.
Section 88(2)(c) of the Act
In relation to section 88(2)(c) of the Act, the High Court considered that the analysis must be conducted by reference to the normal and fair use of the mark across the full range of goods and/or services covered by the registration, and from the perspective of ordinary consumers with imperfect recollection.
The High Court noted that even by 2019, Ms Hudson’s reputation remained strongest in the music and entertainment industry and there was an absence of evidence of actual confusion, despite the coexistence of the mark over a long time. While the absence of evidence of actual confusion does not preclude a finding of likely confusion, in this case the Court found it highly persuasive.
Additionally, the Court found that given the limited use of the KATIE PERRY mark compared with the KATY PERRY mark, the different target markets for the respective products, and the types of promotional associations consumers would expect in connection with Katy Perry, consumers were unlikely to be deceived or confused. Consumers would recognise differences between the marks and would not assume that they were connected.
Accordingly, the High Court reinstated Ms Taylor’s trade mark registration and confirmed that Ms Hudson’s reputation in music and entertainment did not establish a sufficient reputation in relation to clothing and fashion goods.
Key Legal Issues
The Federal Court in the primary judgment and the Full Federal Court on appeal have considered the following key areas in relation to trade marks and the Act.
“Own Name” Defence
Pursuant to section 122(1)(a)(i) of the Act, a person does not infringe a registered trade mark when the person uses, in good faith, the person’s name or the name of the person’s place of business. A key issue was whether the defence could be relied upon by Ms Hudson and the Related Entities, and whether a stage name could qualify as a person’s “own name” for the purposes of the Act.
Justice Markovic held that the “own name” defence did not extend to the Related Entities. This was upheld on appeal in the Full Federal Court.
Justice Markovic also held that the “own name” defence extended to stage names by which a person is known. For the purposes of this judgment, Ms Hudson was known as ‘Katy Perry’ and could rely on the “own name” defence. This was upheld on appeal in the Full Federal Court.
Honest Concurrent Use
Ms Hudson and the Related Entities attempted to rely on the honest concurrent use defence pursuant to section 122(1)(fa) of the Act. This defence applies where the person uses a trade mark that is substantially identical with, or deceptively similar to, the first-mentioned trade mark, and the Court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it.
Both the Federal Court and Full Federal Court found that the trade marks were deceptively similar, however, had to consider whether registration would otherwise have been obtained under section 44(3) of the Act which allows the Registrar to accept an application for registration of a substantially identical, or deceptively similar trademark with certain conditions or limitations if there has been concurrent use of the two trade marks.
Justice Markovic in the primary judgment found that the defence was to be assessed at the date of the first alleged infringing conduct, which was determined to be the date Ms Hudson filed her trade mark application for KATY PERRY. This was upheld on appeal in the Full Federal Court.
Justice Markovic also found that there was no honest and concurrent use with Ms Taylor’s trade mark as Ms Hudson was aware of Ms Taylor’s trade mark at the time of making the application. The Full Federal Court held that the primary judge did not err in finding that the honest concurrent use defence was not available as there was no concurrent use of Ms Hudson’s KATY PERRY mark at the relevant time capable of supporting an application for registration under section 44(3). However, the Full Federal Court considered that the primary judge’s finding that Ms Hudson could not demonstrate honest use was in error as ‘knowledge of the earlier mark is not fatal to a finding as to honesty’.
Key Takeaways
- A strong reputation in one industry or product category will not automatically extend to other goods or services for trade mark purposes.
- Trade mark rights are assessed in the context of the relevant goods and services, rather than the fame or recognition of a person alone.
- Businesses should consider trade mark protection strategies early and explore alternative dispute resolution options before commencing formal proceedings where appropriate.
Practical Considerations for Businesses
The Katy Perry v Katie Perry dispute highlights the importance of conducting trade mark searches and securing protection at an early stage. It also demonstrates that even a well-established reputation may not be enough to overcome an existing registered trade mark where that reputation has been built in a different market or industry. Businesses should carefully consider their trade mark strategy when launching new brands, expanding into additional product categories or entering new markets, and ensure that appropriate protection is obtained before significant goodwill is established.
If you would like assistance with trade mark registration, trade mark enforcement, brand protection or intellectual property disputes, please contact a member of Coleman Greig’s Intellectual Property team.
