American popstar Katy Perry recently lost a trade mark infringement dispute[1] filed in 2019 by Sydney-based fashion designer Katie Taylor.
The battle of the Katies started more than 15 years ago: Australian Katie Taylor, born Katie Jane Perry (The Designer) started designing and selling clothes under the brand KATIE PERRY in 2007 and filed a trade mark application for that name in September 2008 in respect of clothes. Singer-songwriter Katy Perry, whose original name is Katheryn Hudson and her affiliated companies (The Singer) sent correspondence and unsuccessfully attempted to negotiate a co-existence agreement around that time. Negotiations were ultimately abandoned due to the media coverage of the conflict.
The Designer’s mark proceeded to registration that same year whereas the singer was blocked from registering her own KATY PERRY mark in relation to clothes due to this earlier similar mark. Despite the registration of the Designer’s Mark, the Singer promoted and sold KATY PERRY branded accessories and clothes in Australia from 2009 through Australian retailers, online sales, as well as pop-up stores during her Australian tours. This continued for over 10 years until the Designer received backing from a global litigation funder to commence infringement proceedings against the Singer.
Trade mark infringement
The Judge held that the Designer’s trade mark was infringed by the sale of clothing, and that the conduct was “deliberate” “in the sense that they did not let the fact of the Applicant’s Mark stand in their way” and resulted in a “calculated disregard” of the Designer’s rights. For that reason, the Judge indicated that the infringing conduct could attract additional damages.
However, it was found that the ‘footwear, headgear, headbands, decorative masks, jewellery and bags’ sold by the Singer were not clothes, or goods of the same description as clothes. Clothes were further defined as “garments which cover the body but not the extremities of feet or head”. Accordingly, the Singer did not infringe the Designer’s trade mark by selling these products.
Cross-claim
The Singer sought cancellation of the Designer’s trade mark on the basis that use of the Designer’s mark was likely to deceive or cause confusion given the Singer’s reputation.
Although the reputation of the Singer in respect of KATY PERRY was acknowledged, it was found to only extended to entertainment and music in 2008 and not clothes. Further it was held that the Singer’s strong reputation was “[a] compelling reason” why a consumer would not be confused as to the source of goods and meant the Singer could be “a victim of [their] own success”. The Judge also noted that no evidence of actual confusion “of some persuasion” was submitted.
Accordingly, the cross claim was dismissed.
Own name defence
The Singer raised a defence to trade mark infringement under s 122(1)(a)(i) of the Trade Marks Act which allows a party to use their own name in good faith. Her Honour found that the defence applied to the birth name of a person, as well as the name by which a person is known. As such, the Singer could rely on the defence in relation to her stage name Katy Perry.
The same finding was not reached in respect of the Singer’s related companies (despite being controlled by the Singer) which were found to be liable for infringement for selling clothes bearing the KATY PERRY mark.
Conclusion
This is not the first time that trade mark conflicts have arisen over Celebrities’ names. Kylie Jenner faced fierce opposition from Kylie Minogue and failed to trademark the name Kylie. Fashion designer Collette Dinnigan also objected to the use of the shared first name from fast-fashion chain Colette. The dispute settled after Colette agreed to change its name to Colette by Colette Hayman.
The main takeaway is that no matter how famous you or your organisation may be, it is essential to conduct clearance searches to ensure you do not infringe someone else’s trade mark rights. Should a conflict arise, it is best to explore settlement options rather than ignore the potential dispute.
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[1] Taylor v Killer Queen, LLC (No 5) [2023] FCA 364