Australia’s highest court has delivered a significant victory for an independent fashion designer in a long-running trademark dispute with global pop star Katy Perry, ruling that the singer’s company could not cancel an earlier Australian clothing trademark held under the name “Katie Perry”.
In a judgment handed down by the High Court of Australia, the court allowed the appeal by Sydney designer Katie Jane Taylor and overturned an earlier ruling by the Federal Court of Australia that had favoured the celebrity’s merchandising company, Killer Queen LLC.
The decision reinforces a key principle of trademark law: reputation alone is not enough to override an earlier registration, particularly where a designer has already established rights within the apparel category.
In its decision, the High Court of Australia said the lower court had wrongly concluded that the designer’s trademark should be removed, stating “the Full Court erred in concluding that the grounds for rectification of the Register were established.”
A key part of the case was around consumer confusion between both brand names.
“The requirement of likelihood of causing confusion "because of" the reputation of the earlier mark directs attention to the degree and nature of that reputation, and the likely effect of that reputation upon the effectiveness of the opposed mark in performing its function as a trade mark,” the court verdict read.
“The relevant confusion is about the source of goods or services and whether the particular goods or services on which the opposed trade mark is used or intended to be used come from the same source as goods or services on which the earlier trade mark is used.
“As with the similar test in s 120(2) of the [Trade Marks] Act, the question is whether there is a "real, tangible danger" of confusion occurring. Again, as with the similar test in s 120(2), the relevant confusion to be considered is confusion of ordinary people who are customers likely to buy the particular goods or services that are the subject of the opposed trade mark registration.”
Taylor launched her fashion label in 2007, using the name Katie Perry, which included her maiden surname. She registered a trade mark for a logo in late 2007 which featured the brand name.
Singer Katy Perry sparked her rise to fame in November 2007 when she released her single “Ur So Gay” on social media platform MySpace, which went viral.
Taylor had first heard about the singer in 2008 when hearing her next hit song “I Kissed A Girl” on the radio. In 2009, Taylor received her first letter from Katy Perry’s lawyers, calling for her to stop using her registered trade mark, sparking a legal battle that ran for more than 16 years.
In an email exchange in 2009, seen in the case verdict, Katy Perry’s manager Steven Jensen told the singer about the Katie Perry brand, saying she has traded under that name since 2007.
“Of course, this issue has been blown way out of proportion as we (you) have not tried to keep her from trading under her name, and have certainly not sued her for trademark infringement,” Jensen told singer Perry. “This popped up as the lawyers were submitting applications for trademarking your name around the world, including Australia, and the system automatically submits an 'objection' if anyone is trading under your trademark or any trademark that is similar to Katy Perry ... and they do not have a registered trademark.”
Jensen added that the tabloids in Australia had already picked up the story, and would arrange some publicity – such as a press release – to clarify the situation.
The American pop singer responded, telling Jensen to keep her out of the publicity entirely, adding to just state the facts.
"Don't soften it up, don't apologize, nothing,” she told him. “Let me know what’s going out before it does pls.
“Stupid b****es,” she added. “I wouldn’t have even bothered with this [if] mtv hadn’t picked up this silliness. Dumb b****! Rawr!"
The case report clarified Jensen's assertion that Katy Perry’s team had done nothing to stop the Sydney designer from using her trade mark. In May 2009, the American artist filed a notice of opposition to the registration of the appellant's mark out of time, with an application for an extension of time to file that notice. In that same month, the Sydney designer received a cease and desist letter from Australian trade mark attorneys acting for the American artist.
The High Court judges ultimately ordered that Taylor’s appeal be allowed with costs, reinforcing that a trademark may only be removed if its use would be “likely to deceive or cause confusion” among consumers.