Australian designer Katie Perry finally wins in decades-long TM battle against US pop star Katy Perry

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Katie Taylor, an Australian fashion designer who trades under her maiden name, Katie Perry, has won a protracted court battle to defend her rights to use her own name as a trade mark for clothing, in the face of a challenge by lawyers representing Katy Perry, the US pop star.

Katie Perry originally registered her TM in Australia in 2007 and by 2008 was selling her products at local markets and online, supported by social media accounts. Katy Perry, meanwhile, released her first major studio album, One of the Boys (including the song ‘I Kissed a Girl’), in 2008.

In 2009, lawyers acting for the singer’s management company (Killer Queen LLC) applied to register Katy Perry in Australia for various goods including clothing. The Australian Trade Marks Office objected as it argued that ‘Katy Perry’ and ‘Katie Perry’ were deceptively similar. The BBC reports that Katy Perry’s lawyers originally signalled they would apply to have the designer’s TM revoked, but dropped those plans.

Despite clearly knowing that there was an existing trade mark, ‘Katy Perry’ branded clothing continued to be sold in Australia, including as official merchandise supporting the singer’s Prismatic World Tour in 2014 and through major retailers.

The Australian Katie Perry took legal action which slowly made its way through the Australian courts, before getting a judgement supporting her trade mark rights in in 2023, when a court ruled that use of the name ‘Katy Perry’ for clothing in the country clearly infringed the designer’s ‘Katie Perry’ TM. It also refused an application by the signer’s lawyers to have the designer’s TM revoked, as it accepted that when the latter’s TM was granted in 2008 (the ‘Priority Date’), the singer had not yet established a strong reputation.

A year later, a higher court reversed that judgement, and ordered that the designer’s Katie Perry TM should be cancelled.

However, the Australian High Court has now ruled that this decision was in error, as any reputation the singer had established before 2008 was as a musician and singer, not in clothing. As a result, there were no grounds to cancel Katie Perry’s TM for clothing.

Tellingly, the judgement (accessible here - Taylor vs Killer Queen LLC) also stressed that the singer’s management company’s actions in continuing to infringe Katie Perry’s TM for clothing were responsible for the ‘confusion’ in the marketplace which the singer’s lawyers were arguing was a core reason to revoke the designer’s TM.

The High Court rejected the argument that, as it was ‘common practice’ for singers and bands to sell branded clothing, the designer’s TM should not have been granted or should be revoked. As there was no evidence of any ‘Katy Perry’ branded clothing being sold before the 2008 priority date, it was an irrelevance.

There was also the issue that it was the singer’s companies that had been the ones causing any confusion by continuing to sell clothing despite clearly knowing there was a prior TM in force. One of the five High Court judges, Justice Stewart, quoted a core legal principle in his judgement – that nobody should be allowed to take advantage of their own wrongdoing – so the argument over confusion was invalid as the singer’s management company had been the ones responsible for it.

Also, there was also no evidence from 10 years of both brands being sold in the Australian market of any actual confusion – so again, arguments from the singer’s lawyers that her reputation was being damaged were rejected.