Australian Katie Perry Wins High Court Appeal Against Katy Perry
After 17 years, the trade mark battle between the Katy/ie Perrys has concluded, with Australian Katie Perry coming out on top. The High Court has found that Katie Perry’s trade mark is not likely to harm the singer’s reputation or cause confusion, and did not breach trade mark laws. It is hoped that this is the final instalment of the saga for our Aussie designer, which MBIP has previously reported on here, here, and here.
As a quick catch-up:
- the designer registered her mark KATIE PERRY 2008, for clothing;
- in 2019 the designer finally obtained litigation funding to sue the singer for trade mark infringement as the singer had been using the name KATY PERRY in relation to clothing merchandise sold to Australian consumers;
- the singer counter-sued, arguing that the designer’s label should be revoked;
- a Federal Court judge initially accepted the designer’s arguments, but in 2024, devastatingly her trade mark was cancelled when the Federal Court appeal bench decided the singer’s greater reputation should take priority.
This outcome was surprising, with the Federal Court finding:
- the own name defence was successful for the singer;
- therefore, the singer herself was excused from trade mark infringement on this ground;
- Katy Perry already had a significant reputation using her current stage name in association with her career as a singer, including in Australia, by the time the designer’s mark was applied for. Thus, Taylor’s trade mark should have been considered likely to cause confusion with Perry’s from the start and never registered;
- due to this likelihood of confusion if use continues, the designer’s mark was cancelled.
High Court Appeal Decision
On March 11th, the High Court handed down a decision in which three High Court judges concluded there was no real likelihood of confusion, either at the time Taylor had registered her mark in 2008, or in 2019, when the singer applied for it to be cancelled.
Justice Jayne Jagot pointed out that, in over a decade, the singer’s legal team had not produced evidence of any real consumer confusion between the two brands – which is an extremely important point. This supports the argument that pre-existing registered rights, no matter how small the owner/business may be, cannot be disregarded or defeated by celebrities or famous businesses.
In this case in fact, it was found ultimately that Katy Perry had become so well known in Australia, that no ordinary consumer would believe that the designer’s products were in any way linked to the global pop star.
The designer’s trade mark KATIE PERRY will now remain registered and she has been awarded costs following the conclusion of the case.
Co-Existence
It must be noted that in 2009, the singer did attempt to negotiate co-existence in the Australian market in relation to clothing, but the designer rejected the proposal. It is worth considering that in some circumstances it pays to make a commercial decision to co-exist. Co-existence agreements can be a good way of allowing rights to both parties within agreed terms, which can be a better option than years of costly litigation with uncertain outcomes.
Take Aways
This conclusion to the long-running case proves the weight that a registered right can hold in a trade mark dispute. Registering and maintaining your trade marks is a safe bet in case another seller enters the market with a similar name.
MBIP’s trade marks team includes attorneys experienced with trade mark disputes. If you think someone is infringing on your trade mark, have received a warning that you are infringing, or want to ensure you have adequate protection, our attorneys can help you devise an effective strategy. Visit our contact us page to get in touch with our team.
