Katie v Katy
A rose by any other name
Trade mark owners can invest considerable
effort in promoting and establishing the reputation
of their brand, and so are justifiably angered if someone
else comes along and starts using the same mark.

Normally, registering your trade
mark means that you would have
remedies against an infringing
third party – but what happens
when your brand is you, and
your trade mark is your name?
This is the situation that has arisen
for Australian fashion designer
Katie Taylor, who registered her
maiden name, ‘Katie Perry’ as an
Australian trade mark in relation
to clothes in 2008. Those of you
familiar with the pop music scene
may already know where this is
going – US singer Katy Perry has
started selling goods including
pizza-themed pyjamas and cat-ear
headbands, which are either clothes
or arguably similar goods to clothes.

Katy-with-a-Y adopted her stage name
‘Katy Perry’ in 2004 and registered
this in Australia in relation to CDs,
videos downloadable content and
entertainment services in 2009.

Significantly, she did not register the
name in relation to clothes, although
there are a number of marks including
the name Katy Perry in relation to
perfumes. Two of these are MEOW!
BY KATY PERRY and PURR BY KATY
PERRY, showing a feline motif which
ties in with the cat-ear headbands.

Katie-with-an-IE is now suing Katy-
with-a-Y and an associated company
Killer Queen LLC for infringement of
her clothing trade mark registration.

Katy-with-a-Y’s lawyers have cross
claimed that ‘Katie Perry’ is invalidly
registered, because ‘Katy Perry’ had
acquired a reputation in Australia
before ‘Katie Perry’ was applied for.

They have also argued that use of
‘Katy Perry’ is ‘use in good faith of a
person’s name’, and argued that this
also applies to Killer Queen LLC.

The Trade Marks Act does provide a
defence against infringement, stating
that a person does not infringe
a registered trade mark when:
(a) the person uses in good faith:
(i) the person’s name or
the name of the person’s
place of business; or
(ii) the name of a predecessor
in business of the person or
the name of the predecessor’s
place of business.

Katy Perry is the stage name of
Katheryn Elizabeth Hudson, based
on an abbreviation of her first name
and her mother’s maiden name. The
defence does not normally extend to
just a surname or to a business name,
unless that is the name by which the
person, or company, is known in the
trade. The question here may be to
what extent is Katy Perry known in
the clothing trade. It is difficult to
see how Killer Queen LLC hopes to
rely upon this defence, unless they
claim to be the successor in title to
Katy Perry. The level of reputation
of Katy Perry in Australia in 2008,
and the likelihood that confusion
would arise from use of ‘Katie Perry’
in relation to clothing will also be
relevant to determining whether
‘Katie Perry’ can be invalidated.

This is, of course, not the first
time that such issues have arisen.

A few years ago, Kylie Jenner
withdrew Australian applications
for KYLIE COSMETICS in relation to
cosmetics, and KYLIE in relation to
entertainment services after a trade
mark dispute with Kylie Minogue
regarding rights in the name KYLIE.

Unless your name is Moon Unit
Zappa, X Æ A-12, or something
similarly unusual, protecting
rights in a name is always going
to be problematic because of
the likelihood that someone else
of that name will want to use
it as a trade mark in relation to
their own goods. The problem
is compounded where the other
party’s goods are not related to
your goods. This is the reason that
the Registrar refuses to accept
applications for surnames alone if
they are considered ‘common’ in
Australia. The risk is too high that a
common surname will be required
by another trader for similar goods.

As Australia is a ‘first to use’ country,
you can protect the reputation of
your name in relation to goods or
services for which you are first to
use the mark in Australia. To avoid
later conflict with another person of
the same name, it is recommended
that you register your name for all
the goods and services you are
interested in. A 2004 registration
of ‘Katy Perry’ for clothing would
have blocked registration of ‘Katie
Perry’ for the same goods in 2008.

Because of the defence under the
Act, earlier registration will still not
prevent use of a name by another,
provided the name is their own and
use is in good faith, but actions
may still be available under the
Australian Consumer Law if the
use is misleading and deceptive.

Russell Waters | Principal
BSc LLB FIPTA
russell.waters@pof.com.au Inspire December 2020
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