What is happening?
The Australian designer, Katie Taylor, is in the process of suing the international star, Katy Perry, for infringing her clothing brand Katie Perry in Australia.
What Constitutes Trade Mark Infringement?
The unauthorised use of a trade mark for the same or similar goods and services, that is identical or confusingly similar to a trademark that is registered on the trade mark register.
Background
Katie Taylor (maiden name as Katie Perry) is the registered owner of the trade mark “Katie Perry” in Australia for clothing (class 25) in September 2008. She has been selling clothes under the brand name Katie Perry since November 2006.
The international superstar, Katy Perry (a stage name), with the legal name Kathryn Elizabeth Hudson has previously tried to apply for “Katy Perry” as a trade mark for clothing in Australia but was refused registration because IP Australia found it to be too similar to the Australian designer’s trade mark for the same goods.
In 2009, Hudson filed cease and desist letters against Taylor’s use of her trade mark. Hudson claims she had adopted the name “Katy Perry” for the purposes of her professional music career in 2004, whilst Taylor argues that she began her business well before she knew of the existence of the singer. They attempted a co-existence agreement but the terms could not be agreed upon.
In December 2019, Taylor commenced trade mark infringement proceedings (see previous blog) against Hudson on the basis that Hudson had infringed on Taylor’s trade mark “Katie Perry”. Despite being aware of Taylor’s existing trade mark rights, Hudson has been selling clothing products in Australia under the name “Katy Perry” since 2013.
In response, Hudson filed a good faith defence under the Trade Marks Act on the grounds that she used her own name in good faith. According to Australian Postal Corporation v Digital post Australia [2013] FCAFC 153, the defence applies where the use was:
– honest without ulterior motive; and
– not intending to mislead or exploit the goodwill built by another trade mark.
The fact that Hudson knew about Taylor’s trade mark from her cease and desist letters shows prior knowledge of the trade mark’s registration, which indicates a lack of good faith.
In addition to her defence, Hudson also sought to cross claim Taylor seeking to cancel Taylor’s mark because Hudson argued that Katy Perry had already acquired reputation in Australia before the registration of the Australian designer’s trade mark and consumers may be confused believing the singer is associated with Taylor’s clothing brand.
The parties will return to court at a later date.
Take Away Message
As an owner of a business (big or small), it can be easy to neglect the importance of your brand for the goods and/or services you are providing.
A trade mark owner has the exclusive right to use the registered trade mark in the course of business. They have the right to take legal action under the Trade Marks Act against any infringing or unauthorised use of their trade mark.
Some important points to note: Taylor first thought she was going to lose her own brand when she received the cease and desist letters from the international superstar. However, because she is the trade mark registered owner of “Katie Perry”, she has exclusive use of her brand and is able to continue the use of her brand for her designer clothing in Australia and the trade mark registration also offers protection from it being used without authorisation.
Taylor was also first to register and has exclusive rights to use the mark “Katie Perry”. Although Australia is not a “first to file” country, her continuous use of the brand in Australia has made it difficult for Hudson to cancel the mark based on non-use. Even though Hudson claims to have adopted the mark back in 2004, she will have to show evidence that there was use of her brand “Katy Perry” in Australia on clothing before Taylor’s use in 2006.
If you own a brand and you are using it for business in Australia, we suggest that you file an application for trade mark as soon as possible. You never know who might try to lay claim to your brand.
Don’t wait until it is too late! Contact one of our helpful trade marks experts – we are always happy to help brand owners.
