The tale of two women, two teenage dreams and one name - Katy Perry vs Katie Perry
May 03, 2023As stated by Justice Markovic in his opening paragraph of the 21 April 2023 judgment:
"This is a tale of two women, two teenage dreams and one name."
Katie Taylor (nee Perry) - the Australian fashion designer
- a fashion designer
- designed and sold clothes under the name "Katie Perry" since about 2007
- the registered owner of the Australian trade mark "Katie Perry" in class 25 for "clothes" (with a priority date of 29 September 2008)
Katheryn Hudson (aka Katy Perry) - the US singer
- known as Katy Perry since 2002 for her professional music career and associated commercial merchandise licensing activities
The claim
- Taylor alleges that Hudson (and her associated companies) have imported for sale, distributed, advertised, promoted, marketed, offered for sale, supplied, sold and/or manufactured in AUstralia, or to people in Australia, goods bearing the word mark "Katy Perry" - and infringed Taylor's registered trade mark pursuant to section 120 of the Trade Marks Act 1995 (Cth).
- In response, Hudson has sought the cancellation of the trade mark pursuant to section 88 of the Act, and also argued that she has used her own name in good faith pursuant to section 122 of the Act.
Initial trade mark opposition
The dispute between the two Katies began in 2008, when the Australian designer filed for a trademark for her name in the fashion industry. Katy Perry, who had already achieved global fame as a pop star, tried to oppose the trade mark registration, filed cease and desist letters against the designer, and applied for a hearing with IP Australia to argue that the use of a similar name in the same industry would cause confusion among consumers and damage her brand. The opposition was withdrawn 2 hours before the scheduled hearing. Steps were subsequently taken by the singer for the designer to agree to a "coexistence arrangement", which the designer refused to do.
Court cases
The longstanding dispute between the parties, fuelled by instances of the singer using her own name on merchandise for her 2014 and 2018 Australian tours, came to a head in 2019 when a lawyer heled the designer pro bono (that is, without charge) and court proceedings were eventually commenced in 2019.
The Court held that the singer had breached the trade mark in the lead-up to the 2014 tour as she personally promoted pop-up shops for the name-branded clothing on social media, despite knowing that there was a registered trade mark. The Court considered this to be "calculated disregard of [the designer]'s rights".
The case has been widely discussed in legal circles, as it raises questions about the use of personal names in branding and the extent to which trademark law can protect celebrity brands. Some legal experts have argued that the ruling sets a precedent for stronger protection of personal names in the fashion industry, while others have criticized the decision as an example of trademark law being used to stifle competition.
The case is also notable for highlighting the growing importance of trademark protection in the fashion industry, where personal names and celebrity branding have become increasingly common. As more celebrities enter the fashion industry and seek to monetize their personal brands, the issue of trademark infringement is likely to become more prevalent.
The full decision of the Federal Court can be read here - http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/FCA/2023/364.html
Contact the Shire Legal team if you have any questions.
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