APAA e-Newsletter (Issue No. 36, August 2023)

Two Women, Two Teenage Dreams, One Name

Candice Noring and Daniel Wilson, Spruson & Ferguson Australia (Australia)

Taylor v Killer Queen, LLC (No 5) [2023] FCA 364 (21 April 2023) (Katy Perry / Katie Perry)

In this case, an Australian fashion designer, Katie Jane Taylor (“Taylor”) succeeded in a trade mark infringement dispute against the well-known singer-songwriter Katy Perry (originally named Katheryn Elizabeth Hudson) (“Perry”). Taylor is the registered owner of Australian Trade Mark No. 1264761 KATIE PERRY in Class 25 for “clothes”, and has used the trade mark “Katie Perry” since about 2007.

Essentially, Taylor claimed that Perry and her associated companies’ (named, Killer Queen, Kitty Purry, and Purrfect Ventures) use of KATY PERRY and other marks infringed the KATIE PERRY mark. In Perry’s cross-claim, Perry and her associated companies sought to have Taylor’s mark cancelled and removed from the Trade Mark Register. under 88(1)(a) of the Trade Marks Act 1995 (Cth) relying on ss 60, 42, 43 and 88(2)(c).

This trade mark battle first began in May 2009, when Perry’s United States lawyers sent a cease and desist letter to Taylor requesting her to stop using the KATIE PERRY brand name as Perry believed the name to be “misleading and deceptive”. Soon after, Perry lodged an application to register the name KATY PERRY (Australian Trade Mark No. 1306481) in Classes 9, 25 and 41, with Class 25 covering a broad range of apparel items such as “headwear” and “footwear”. Perry then received an adverse examination report because of the prior registered KATIE PERRY mark. Class 25 was removed from the KATY PERRY application and proceeded to registration for the other goods and services. Attempts in July 2009 also failed to establish a co-existence agreement between the parties.

Taylor’s fashion business continued to flourish as did Perry’s musical career in the 2010s. Both parties promoted and built substantial reputations in their respective industries. But it was in October 2019, that Taylor commenced court proceedings and claimed that from at least October 2013, Perry and her associated companies had imported for sale and distributed clothes bearing or in association with various KATY PERRY marks.

Justice Markovic found that Perry and her associated companies had infringed the KATIE PERRY mark by advertising, offering for sale and selling KATY PERRY branded goods at her pop-up stores during her 2014 Prismatic Tour both in Sydney and in Melbourne. The Federal Court then ordered an injunction to prevent Perry and her associated companies from continuing to engage in the infringing conduct. The matter was then postponed for case management.

In June 2023, the singer and her firms filed an appeal against the decision. A hearing is yet to be scheduled.

This decision is a reminder, especially for brand and business owners, on the importance of protecting your brand and its reputation, and registering a trade mark as early as possible, especially when using your own name as a trade mark.