By Jessica Bell, Lawyer – Kalus Kenny Intelex, Melbourne, Australia
Pop star Katy Perry has successfully appealed a Federal Court ruling over the use of an Australian designer’s trade mark registration for the words KATIE PERRY. The recent decision by the Full Court of the Federal Court unanimously overturned Justice Brigitte Markovic’s findings in Taylor v Killer Queen, LLC (No 5) [2023]. The trio found that Katie Taylor’s trademark was not validly registered and ordered for the registration to be cancelled.
Background
The facts of this case date back to 2002 when singer Katheryn Hudson (Ms Hudson) adopted the stage name Katy Perry to avoid any confusion between her and actress Kate Hudson. From 2002 Ms Hudson continued to perform and record songs under the stage name and fast forward to 2008, she rose to international fame with various singles such as “I Kissed a Girl” and “Hot n Cold”.
Meanwhile, in 2007, Australian fashion designer, Katie Perry (now Katie Taylor), started her own clothing line and began selling clothing under her own name. Subsequently in September 2008, she made an application to IP Australia to register the words KATIE PERRY in respect of clothing (Class 25).
At the time, Ms Hudson became aware of Ms Taylor’s use of the name and opposed the registration of the KATIE PERRY mark on the basis that Ms Taylor may seek to benefit from Ms Hudson’s reputation. At the same time, Ms Hudson filed a trade mark application for the words KATY PERRY with respect to live and recorded music (Classes 9 and 41) and clothing (Class 25). Ms Hudson’s application was rejected on the basis that it was too similar to Ms Taylor’s KATIE PERRY mark. Correspondence followed between the two parties where Ms Hudson attempted to negotiate an agreement whereby the two marks could co-exist in relation to clothing. At the time Ms Taylor rejected this proposal and Ms Hudson ultimately withdrew her opposition to the KATIE PERRY mark. This led to IP Australia accepting and registering the KATIE PERRY trade mark in August 2009.
Taylor v Killer Queen, LLC [2023] FCA 364
Several years later in Taylor v Killer Queen, LLC [2023] FCA 364, Ms Taylor commenced proceedings against Ms Hudson and her associated entities pursuant to s 120 of the Trade Marks Act 1995 (Cth) (the Act), alleging that the respondents had infringed the KATIE PERRY mark by using the KATY PERRY mark in the promotion and sale of clothes or goods of the same description.
Ms Hudson and Kitty Purry Inc also brought a cross-claim against Ms Taylor, seeking the removal of KATIE PERRY from the trade marks register pursuant to s 88 of the Act on the basis that at the time Ms Taylor made her application, Ms Hudson had grounds to oppose the application.
Ultimately the court held that Ms Hudson had infringed the KATIE PERRY mark by advertising Katy Perry clothing for the Australian market on social media, at Australian pop-up stores and during Australian tours. The court also held that Kitty Purry Inc had infringed the KATIE PERRY mark by offering for sale and selling clothes and merchandise bearing the Katy Perry name during the Ms Hudson’s 2011 Australian tour on the Bravado website and at pop-up stores in Sydney and Melbourne. However, the court did distinguish between ‘clothing’ and other items such as footwear, headgear, caps, hats and headbands, novelty jewellery, bags, decorative masks and decorative headwear. Justice Markovic found that the promotion and sale of these items were not infringing on Ms Taylor’s mark.
The cross-claim by Hudson and Kitty Purry Inc was also dismissed by the court. While Justice Markovic did acknowledge that that Ms Hudson had obtained a reputation in the KATY PERRY mark prior to Ms Taylor’s application to register the KATIE PERRY mark, at the time it was not in relation to clothing but in the entertainment and music industry.
Killer Queen, LLC v Taylor [2024] FCAFC 149
The decision of Justice Markovic in the Federal Court was appealed to the Full Court of the Federal Court by Ms Hudson and her associated entities in Killer Queen, LLC v Taylor [2024] FCAFC 149 on the basis that the original decision was adverse to their interests.
Ms Hudson filed a cross-appeal on various grounds, including the Federal Court’s findings on joint tortfeasorship, scope of registered goods, and Ms Hudson and her associated entities’ defences to the alleged trade mark infringement.
The Full Court of the Federal Court unanimously overturned Justice Markovic’s decision, finding that Ms Hudson had acquired significant reputation in the KATY PERRY mark with respect to music and performance and because of this, it was likely that consumers could be misled or deceived by Ms Taylor’s use of her KATIE PERRY mark. Therefore, the KATIE PERRY mark should be cancelled.
Notably, the primary judge emphasised that each party had adopted their name as a trade mark at a time that each was unaware of the existence of the other. However, Ms Taylor did not take steps to protect her brand and the KATIE PERRY name until after she had become aware of Ms Hudson’s reputation.
The deregistration of Ms Taylor’s mark will not be immediate with Ms Taylor first being given the opportunity to consider whether she will seek leave to appeal the decision to the High Court.
Key Takeaways
The outcome of this case may have been different if Ms Taylor had taken steps to protect her mark at the time she started using her brand, rather than after she became aware of Ms Hudson’s reputation and use of the KATY PERRY mark. It is important to ensure that you register any trade marks for your brand as early as possible and not just when you realise that there may be another person or entity that you may be in competition with.
This case also emphasises the strength of global recognition against local business endeavours. Despite both parties entering the dispute with the best of intentions, the court’s ruling underpins the challenges endured by small businesses who compete against global entities.
Finally, although not directly linked to the Katy v Katie case – it is important to note that a business or company name registration is not sufficient in protecting a name. If you would like exclusive rights to your business or company name, a trade mark registration should be considered as early as possible.
