Halfords IP partner Aparna Watal shares how trademarking the wrong way can land you in hot water.
2025 was a masterclass in what happens when brand ambition outruns trademark discipline. In this feature, we take a look at what went wrong, what the courts said in some cases, and the battles currently in motion with leading Aussie brands. We also deep dive into what every retailer can consider when protecting their brand for the year ahead.
Katy Perry vs Katie Perry
Australian designer Katie Taylor launched a fashion label KATIE PERRY in 2007 and applied to register it as a mark for clothing in late 2008, by which time she knew of the US singer Katy Perry. The singer’s company later sought cancellation of Taylor’s registration, alleging the singer’s reputation in Australia pre-dated and extended into clothing.
The Full Federal Court upheld the cancellation ground, finding that the singer’s fame could reasonably cause confusion in the clothing field and that Taylor had registered despite knowledge of that reputation. Taylor has appealed to the High Court.
In practical terms, if the High Court sides with the singer, supermarkets will need tighter clearance protocols for new lines, especially influencer collaborations, lifestyle sub-brands, and merchandise crossovers. Fame, in 2025, may travel faster and wider than packaging design ever could.
Swim Shady vs Slim Shady
A Sydney couple selling beach umbrellas under the ‘Swim Shady’ brand are currently going head-to-head in an international legal battle with US rapper Eminem, who claims the brand name closely resembles the term ‘Slim Shady.’
Earlier this year, the brand filed a trademark in the US for the term "Swim Shady", which was granted. Shortly afterwards, Eminem's team filed a petition to cancel the trademark.
Eminem objected to the ‘Swim Shady’ trademark on several grounds, including one relating to consumer law: that the umbrella brand could mislead or deceive customers into thinking they’re buying a product associated with the rapper. He also accused the Sydney-based brand of creating a "false association" with the rapper. Eminem continues to sell official Slim Shady merchandise – one of several income streams that have built his net worth to a reported $US250 million.
Eminem trademarked the name Slim Shady in the US in 1999 with the release of his album at that time. However, he only filed a trademark for the Slim Shady name in Australia in January 2025.
Swim Shady contends the two parties are in significantly different industries, and that a beach and lifestyle wear retail brand in Australia is unlikely to be confused with the alter ego of a US rapper. Swim Shady has also filed non-use applications against Eminem’s Shady and Shady Limited trademarks in Australia, arguing they have not been consistently used.
Nike ‘Total 90’ Trademark
Most recently, Nike lost the trademark rights to its Total 90 (T90) brand due to failing to maintain the trademark registration. In a twist of events, ‘Total90 LLC’ commenced legal action against Nike, alleging trademark infringement related to recent T90 releases.
The Nike TOTAL 90 dispute is a powerful reminder that trade marks require active care. Too often, particularly during economic downturns or internal restructuring, companies treat trade mark maintenance as a dispensable line item. Registrations are allowed to lapse on the assumption that the brand is dormant, the market has moved on, or that no one else will be interested. But as this case illustrates, the moment protection drops away, the door opens for third parties to move in.
When that happens, a business is left relying entirely on its ability to prove continued use of the mark. That is a difficult evidentiary burden. In Nike’s case, the company is relying on the argument that its TOTAL 90 mark had remained in commercial circulation, even if in a more limited way and even if its registration was allowed to lapse. That continuity of use enabled Nike to further argue that it had not abandoned its rights, despite the registration having lapsed. But most businesses, particularly those managing large or historic portfolios, would struggle to meet that standard.
Courts do not accept symbolic or contrived acts of ‘defensive’ use. They look for genuine, good-faith trading activity that demonstrates the brand remains alive in the market. For heritage brands, the challenge is even greater. A once-famous name may not be enough; historic recognition does not translate into current legal protection. A mark that has not been used for several years, or whose use cannot be substantiated through proper records, is treated as abandoned.
This case underscores a broader truth about brand stewardship: maintaining registrations and documenting use is far more cost-effective and strategically prudent than attempting to revive rights after they have been lost. A lapsed registration invites conflict. Rebuilding a rights position requires expensive legal action, exposes the company to uncertainty, and risks the loss of valuable brand equity built over decades.
At a time when businesses are increasingly reviving legacy lines, re-entering markets, and mining their archives for nostalgic branding opportunities, the lesson is especially important. Companies must treat trade mark maintenance as an essential asset management function, not an optional expense. A modest investment in renewal fees and record-keeping today will always be cheaper than litigation tomorrow.
What every brand should do now
You don’t need a law degree to stay out of the next Brand Fails list. Here are three habits every serious brand (and supermarket supplier) should hardwire into their process:
- Build Brand Hygiene:
Search it, file it, protect it: Strong brands don’t just happen; they are built on discipline. Before you launch, consult a trade marks expert and run a full clearance search where appropriate. Before you start launching, file to register your mark. Before you scale, lock in layered protection: trade marks for your name and cues, design rights for shape and packaging, copyright for artwork. - Prove it and play it straight:
Bad records can lose otherwise strong cases. Keep dated packaging, shelf photos, ads, invoices, and sales data to show genuine use. And when you make statements to regulators or courts, keep them honest. Exaggeration kills credibility. Integrity is part of your IP armour; brands that bluff rarely survive scrutiny. - Design for enforcement and teach your team:
If it’s not built to be defended, it’s built to be copied. Train your marketing and buying teams to spot red flags, whether that is copycat “dupes” or risky influencer tie-ins. A one-page “don’t do this” sheet can save you a year in litigation. Make sure your manufacturer, supplier and distributor contracts clearly identify IP ownership, prohibit unapproved variants, and give you the right to inspect and enforce those rights.
Aparna Watal is a trade marks expert with extensive experience advising clients across Australia and New Zealand.