Katie Perry v Katy Perry: two teenage dreams and one name

In the recent decision of Taylor v Killer Queen, LLC (No 5) [2023] FCA 364, the Federal Court of Australia found that popstar Katy Perry (Perry) infringed the trade mark rights of Australian fashion designer Katie Taylor (born Katie Perry) (Taylor).

Taylor has sold clothing in Australia under the brand name “Katie Perry” since 2007. She has owned a trade mark in Australia since 2008 for the words “Katie Perry” in respect of clothing in class 25 (Taylor Mark).

Perry has used the stage name Katy Perry with respect to her music career and the associated commercial activities since 2002. In 2009, Perry became aware of Taylor’s use of the Taylor Mark. Due to her upcoming tour of Australia that same year, Perry was concerned that Taylor may seek to benefit from her reputation. Accordingly, she opposed the registration of the Taylor Mark and sent a cease and desist letter demanding that Taylor cease using the Taylor Marks.

At the same time, Perry filed a trade mark application for the words “Katy Perry” with respect to live and recorded music in classes 9 and 41 and various clothing items in class 25. IP Australia rejected this application on the basis that it was identical to or too closely resembled the Taylor Mark in class 25. As a result, Perry and Taylor engaged in lengthy correspondence and Perry attempted to negotiate an agreement for their respective marks to co-exist in the clothing market. Taylor resisted attempts to negotiate, and Perry subsequently abandoned those negotiations and the opposition against the Taylor Mark. Class 25 was removed from Perry’s trade mark application, which enabled it to be registered, as the conflict with the Taylor Mark in class 25 had been removed.

Despite the tensions with Taylor, Perry promoted and sold merchandise, including clothing, under a variety of trade marks incorporating the name “Katy Perry” (together, the Perry Marks) in Australia for over 10 years. In 2019, Taylor commenced proceedings against Perry and her associated companies, Killer Queen LLC, Kitty Purry Inc and Purrfect Ventures LLC (together, the Perry Companies), claiming Perry had been infringing the Taylor Mark since at least 2013.

Taylor alleged Perry and the Perry Companies (together, the Respondents) infringed the Taylor Mark by marketing and selling clothes and goods of a similar description in Australia bearing the Perry Mark. Whether the Perry Marks were substantially identical or deceptively similar to the Taylor Mark was not in dispute. The question the Court was asked to consider was whether the Respondent’s activities in Australia infringed the Taylor Mark and if so, whether the defences under sections 122(1)(a) and 122(1)(fa) of the Trade Marks Act 1995 (Cth) (Act) applied.

The Court was asked to consider whether headgear, party costumes, masks and decorative headwear (e.g. cat masks and cat ears), footwear, jewellery and bags (Disputed Categories) were goods of a similar description to clothing. It held that class 25 specifically distinguishes between clothes, headwear and footwear and traders considering a trade mark claiming clothes in class 25 would understand headwear and footwear to be excluded. The Disputed Categories were held not to be goods of a similar description to clothes. Accordingly, the Respondents did not infringe the Taylor Mark with respect to the Disputed Categories.

The Respondents did infringe the Taylor Mark by marketing and selling clothing and merchandise under the Perry Marks in Australia.

The Respondents relied on the defence under section 122(1)(a) of the Act, being that she was using her own name as a trade mark in good faith. The Court held that this defence was only available to Perry, despite the Perry Companies being joint tortfeasors. This defence is only available to joint tortfeasors if the individual whose name is being used as a trade mark is not using the trade mark in their personal capacity, but instead through a company.

Accordingly, Perry personally was found to have not infringed the Taylor Marks. However, as the defence under section 122(1)(a) of the Act did not extend to the Perry Companies, they infringed the Taylor Marks by marketing and selling clothing and merchandise under the Perry Mark in Australia.

The Respondents also relied to the defence under s 122(1)(fa) of the Act, wherein a party will not infringe a trade mark if a Court finds that they would be able to obtain registration of a substantially identical or deceptively similar trade mark if they applied for it. The Court held that, at the time the Respondents first infringed the Taylor Marks, the Respondents did not make any substantial use of the Perry Marks in class 25 beyond filing trade mark applications and so could not demonstrate honest and concurrent use with the Taylor Mark. The defence under section 122(1)(fa) therefore was unavailable to the Respondents.

The Respondents cross-claimed by seeking to cancel the Taylor Mark on the basis that reputation in the Perry Marks had been acquired before the Taylor Mark was filed. The cross-claim was unsuccessful. The Court held that the reputation acquired in the Perry Marks related to music and entertainment, rather than to clothing. Further, by the end of 2019, the reputation in the Perry Marks was so significant that purchasers of clothes bearing the Perry Marks would not be caused to wonder whether there was a connection with the Taylor Mark.

Taylor is entitled to damages, although the amount is yet to be quantified. Taylor was also granted an injunction against Kitty Purry LLC, the only Perry Company that sells clothing in Australia, to restrain it from continuing to infringe the Taylor Mark.

This long running dispute is far from over. Katy Perry has appealed this decision to the full Federal Court of Australia.

This decision highlights the importance for businesses to protect their brands and reputations. In particular:

1. trade mark registrations should be secured as early as possible, in order to best protect a business’ brand and reputation;
   
2. before adopting any trade marks or branding, or filing trade mark applications, it is important to ensure that those trade marks or branding do not infringe on pre-existing rights. This can be achieved by obtaining clearance searches before adopting trade marks or branding;
   
3. careful consideration needs to be given to the specification of goods and services claimed and should be taken in consideration when conducting clearance searches; and
4. trade mark owners should be vigilant about monitoring for potential infringements of their trade marks and to promptly take action if any infringements arise.

This article provides general commentary only. It is not legal advice. Before acting on the basis of any material contained in this article, seek professional advice

Co-author: Jacinta Zheng

Practice: Transactions

Position: Lawyer

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