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The long-running dispute between Australian fashion designer Katie Perry and international pop star Katy Perry has now been resolved with the High Court of Australia handing down a landmark trademark decision. The case concerned whether the Australian designer's registered trade mark "Katie Perry" for clothing should be removed from the Trade Marks Register due to the prior reputation of the singer's stage name "Katy Perry".
Background:
The proceedings arose under the Trade Marks Act 1995 (Cth). In particular, the Court considered whether the registration should be cancelled under ss 88(1), 88(2)(a) and 88(2)(c) on the basis that the mark could have been opposed at registration, including under s 60, which applies where an earlier trade mark has acquired a reputation in Australia such that the use of a later mark would be likely to deceive or cause confusion, however this is restricted to the goods or services specific to the reputation.
The dispute arose after the designer, Katie Taylor ("Taylor") formally known as Katie Perry, launched her clothing label under her birth name "Katie Perry" and registered the mark in Class 25 (clothing) in 2008. The singer Katy Perry (whose legal name is Katheryn Hudson) ("Hudson") subsequently obtained Australian trade mark registrations for "Katy Perry" in Class 9 (electronic and recorded media products) and Class 41 (entertainment services) in 2009.
As the singer's commercial activities expanded, merchandise bearing the name "Katy Perry", including clothing associated with tours and promotional events, was sold in Australia which were not protected under the registered trademarks of the singer. This gave rise to a dispute as to whether the sale of such merchandise infringed the designer's earlier registered trade mark for clothing.
The High Court Decision and fundamental key aspects for business going forward:
- Reputation regarding particular goods and services:
The majority found that an acquired reputation cannot extend beyond the actual use of a trade mark on or in relation to, particular goods or services. Further in support of this the majority found that very few people would have seen any "KATY PERRY" labelled clothing before the registration of Taylor's trade mark registration.
- Likely to deceive or confuse:
The High Court distinguished between the reputation in a trade mark and the fame of a celebrity. It held that although the marks KATIE PERRY and KATY PERRY were similar, an ordinary consumer would quickly realise that clothing sold under KATIE PERRY was not connected to the pop star, particularly as the products contained no references to her image, music or tours. Any confusion would be momentary rather than real.
- Lack of confusion evidence
The marks co-existed in Australia for around ten years without evidence of actual confusion. The High Court held that this period was sufficiently long to support an inference that consumers were unlikely to be deceived or confused, making the absence of confusion evidence significant.
- Knowing infringement
The Court was critical of Ms Hudson continuing conduct that infringed Ms Taylor's trade mark despite being aware of the issue. Justice Steward described the conduct as a "persistent and assiduous" infringement and further noted that a party should not be able to benefit from their own wrongdoing by later seeking cancellation of the mark.
Accordingly, this decision underscores that trade mark protection is limited to the goods and services listed in the trade mark registration. Brands should ensure their trade marks reflect current operations and anticipate future expansion. As brands grow into new products, services, or markets, additional registrations across relevant classes are necessary to be able to maintain adequate protection.
It is common for businesses to adopt a staged trade mark strategy, filing new applications as commercial activities expand. This approach not only strengthens brand protection but also helps avoid potential issues such as non-use challenges. At Pointon Partners, we work with our clients to regularly review trade mark portfolios, align registrations with business plans, and plan for growth to safeguard long-term brand value.
Ultimately, the Katy Perry v Katie Perry case serves as a useful reminder that while reputation can play a role in brand protection, it is not a substitute for a well-considered trade mark strategy. Regardless of how well known a brand may become, the most effective way to protect it is to ensure that appropriate trade mark registrations are in place covering the relevant goods and services.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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