The Katy Perry trademark case involving a Sydney-based fashion designer by the name of Katie Taylor highlights the importance of securing broad trademark protection early on, said Janette Li, senior associate at Davies Collison Cave in Hong Kong.

The case, which began in 2019, also underscores the importance of conducting thorough clearance searches and filing trademark applications well before launching in Australia, added Ian Drew, managing principal at Davies Collison Cave in Melbourne.

In November 2024, American pop singer Katy Perry won her appeal against the Federal Court of Australia ruling in May 2023, which favoured Taylor, whose birth name is Katie Perry. The singer-songwriter, whose real name is Katheryn Elizabeth Hudson, was found to have infringed on the trademark rights of Taylor, who had been using Katie Perry as the name of her clothing line, which has been around since 2007. Her trademark was registered in 2009. Meanwhile, Hudson or Katy Perry sold merchandise bearing the name “Katy Perry” to the Australian public during her concert tours in Australia in 2014 and 2018. 

Taylor filed the case against the American celebrity in 2019. Also named as respondents were Killer Queen, Kitty Purry and Purrfect Ventures – all owned and operated by the world famous entertainer.

Hudson appealed the case and won. The three appeals judges stated that the marks Katie Perry and Katy Perry were deceptively similar. They added that Hudson had attained global status by the time Taylor set up her fashion business, and had already been using Katy Perry as her trademark five years prior. Taylor’s trademark was ordered deregistered.

“Given that the Full Court cancelled the KATIE PERRY registration, the observations on the remaining issues – such as the scope of infringement, joint tortfeasor issue, and defences to infringement – are obiter dicta only,” said Drew. 

However, Drew added that the court’s observations still provide valuable lessons for brand owners in Australia.

“One key lesson is to secure broad trademark protection early. Interestingly, the full court agreed with the primary judge in finding that ‘clothing’ is not the same or of the same description as footwear or headgear,” said Li.

Whether a trademark registration for clothing encompassed the use of a mark for footwear was an issue tackled by the federal court. Judge Brigitte Markovic concluded that clothing and footwear are not conflicting goods. “This means that brand owners should be careful in drafting trademark applications to ensure adequate protection,” Li emphasized.

The trademark case is also a reminder of the potential for directors to be personally liable as joint tortfeasors if they are personally involved in infringing activities. Drew explained: “The full court overturned the primary judge and found that the pop singer was also a joint tortfeasor as the acts of Kitty Purry only came about by the agency of Ms. Hudson who was personally involved in deciding the type, design and items of merchandise bearing the Katy Perry mark to be offered for sale.”

Additionally, the full court provided guidance on the “honest concurrent use” defence. Honest concurrent use is assessed at the date of the first alleged infringing conduct, and query circumstances when this defence can be established. “The full court disagreed with the primary judge and found that there was honest adoption of the mark even with prior knowledge of the fashion designer’s earlier application,” Li pointed out. “The court noted the pop singer adopted the stage name in 2002. However, the full court agreed that there was no concurrent non-infringing use when the pop singer filed her application as use had not commenced for the relevant goods directed to Australian consumers until after that date. The determination of issues at the filing date of the application presents uncertainty for a subsequent user of a mark in the infringement context and reinforces the importance of ensuring marks are free to use in Australia even if adopted elsewhere prior and the benefit of the defence to infringement which arises from a trademark registration in Australia.”

- Espie Angelica A. de Leon