The long trade mark journey, stitched from, ambition, rivalry, and legal complexity, between Australian fashion designer Katie Taylor and global pop icon Katy Perry (Katheryn Hudson) has taken its final stride – ending at the High Court of Australia. What initially began as a clash of names has evolved into a case of national jurisprudential significance, raising critical questions about how well Australian trade mark law protects small brand owners against celebrity reputations.
Why is this Important for Branding?
- Registrations for trade marks provide better protection than unregistered ones, if you register them early enough.
- A trade mark search can support a good brand choice.
- Litigation is time-consuming; careful coexistence agreements can avoid protracted battles.
- Broad registration specifications can provide a deterrent, but in cases of crowded commercial spaces, a targeted specification directly at your goods can protect your brand from being taken from you.
- A trade mark attorney can provide advice on registrations for different market circumstances.
Brand Origins: The Seamstress and the Songstress
In 2002, American music artist and performer Katheryn Hudson adopted the stage name Katy Perry (her mother’s maiden name) for the purpose of distinguishing herself professionally. What began as a stage name soon transformed into a globally recognisable brand with her 2008 breakout album.
Meanwhile in Sydney, Australian fashion designer Katie Taylor launched her own label Katie Perry in 2007 (her own maiden name). Later, in 2008, Taylor successfully registered the word mark ‘Katie Perry’, through IP Australia, in relation to clothing under Class 25.
Threading the needle: Competing Registrations
In 2009, Hudson, through her company Killer Queen LLC, filed an Australian trade mark applications for ‘Katy Perry’ across various classes, including music, CDs and other goods (class 9), apparel (class 25), and entertainment services (class 41). Hudson’s application was rejected by IP Australia on the basis that it was too similar, ‘visually and phonetically’, to Taylor’s earlier Katie Perry trade mark. Hudson’s team proposed to Taylor a coexistence agreement; Taylor declined. As a result, Hudson amended the Katy Perry application to exclude Class 25.
The Federal Court: Hemming In the Issues
In 2019, Taylor commenced proceedings in the Federal Court alleging that merchandise being sold by Hudson in Australia constituted “clothes” or goods of the same description within the meaning of s120 of the Trade Marks Act 1995 (Cth). Taylor also sued Hudson’s affiliated companies – Bravado International Group and Kitty Purry, Inc as joint tortfeasors.
In response, Hudson raised two defences under s122 of the TM Act. First, the “own name” defence under s122(1)(a). The question for the Court was whether Hudson — performing as Katy Perry — had registered her name in good faith. Hudson, also sought to rely on another defence to trade mark infringement under s122(1)(fa), being that that she would be entitled to register the Katy Perry mark under either s44(3)(a) as an honest or concurrent user or under ‘other circumstances’ in s44(3)(b).
Moreover, Hudson and Killer Queen brought a cross claim, seeking cancellation of the Applicant’s registration under s88(1)(a) of the Act, relying on grounds including s60 (prior reputation), s42 (contrary to law), and s43 (likelihood of confusion) as well as s88(2)(c) (further confusion due to circumstances).
Why Class 25 Mattered: What Counts as ‘Clothing’?
- Hudson’s companies, Bravado International and Kitty Purry, were found liable for infringement of Taylor’s trade mark. However, only the merchandise that fit the description of clothing, as per Taylor’s TM registration, were covered. Other items like footwear, headgear, and certain accessories were outside the scope and could not be pinned for infringement.
- The judgment confirmed that a trade mark is only as broad as the class and words sewn into its registration; you can’t expect more coverage than you have specified in your trade mark application.
Other Key Findings (first instance)
- Killer Queen and Hudson were liable for infringement as joint tortfeasors, even though they were not directly involved with the merchandise sales outlets.
- Hudson had infringed Taylor’s registration through a tweet where she personally promoted “Cozy Little Christmas” hoodie, t-shirt, sweatpants and scarf.
- While Hudson successfully established a good faith defence, demonstrating that she had not infringed Taylor’s registration, it was held that this defence could not extend to third-party traders or licensees – such as Kitty Purry.
- Regarding the defence under s122(1)(fa), the court found that there was no honest concurrent use and no use at all of KATY PERRY in class 25 after the priority date of Hudson’s application.
- In respect to the cross claim, which sought the cancellation of Taylor’s registration, Markovic J found that the use of Taylor’s Mark Katie Perry on clothing was not ‘likely to deceive or cause confusion’.
- The court ruled in favour of Taylor, granting her an injunction against Hudson and Kitty Purry.
Full Federal Court: Altering the Pattern
In 2024, Hudson’s appeal was granted on the grounds that the primary judge erred to consider that she had successfully established a reputation in the Katy Perry Mark in Australia before the priority date of Taylor’s application for her registration. Hence, Hudson’s previous cross claim was favoured by the Full Court, due to Taylor’s Mark being likely to deceive or cause confusion.
The FCAFC found that the primary judge unduly confined the reputation of the Katy Perry Registration, overlooking the practice of pop stars to sell merchandise such as clothing at concerts or to launch their own clothing brands.
As a result, the FCAFC found that Taylor’s trade mark was to be terminated.
High Court: The Final Stitch
The matter now awaits the High Court’s decision, which will clarify whether the FCAFC erred in its interpretation of reputation and in its judicial discretion. This highly anticipated ruling will address the scope of protection for personal brands, the enforceability of trade marks against broader commercial interests, and the evidentiary standards required.
Stay tuned – the final word of Perry v Perry is yet to come!
