Katy Perry vs Katie Perry: An End to the Trade Mark Battle
The latest update in the long-running trade mark dispute between Sydney-based Australian designer Katie Taylor and American popstar Katy Perry has resulted in a surprising twist.
Background
If you need to be brought up to date, we have published 2 articles in the past on this fashion feud: you can read the first here and the second here.
In short, the pair came to blows over the similarity between Katie Taylor’s mark KATIE PERRY (her birth name), which she uses for her clothing brand, and Katy Perry’s mark KATY PERRY, which is also used in association with clothing for the popstar’s merchandise.
After applying to file a trade mark for her stage name in class 25 (clothing) and receiving objections to do with Taylor’s trade marks, the singer filed cease and desist letters against the brand which alleged that she had been using the name Katy Perry for years before Taylor filed the KATIE PERRY trade mark. Eventually, she offered a coexistence agreement, but Taylor turned it down.
Taylor brought infringement proceedings against Katy Perry and her associated companies in 2019. The popstar argued a good faith defence and also sought to have Taylor’s mark cancelled. This initial decision was in Taylor’s favour, with the court ruling that Katy Perry had knowingly infringed on Taylor’s KATIE PERRY trade mark by selling clothing with her stage name on it during concert tours in Australia.
Appeal
In November, an appeal of the case was heard by the Federal Court of Australia.
Katy Perry’s team relied on the own name defence, arguing that she should be able to use her own name to sell her merchandise, including her well-known stage name.
The appeal resulted in a surprising outcome, with the Court finding the defence successful for Perry, but this defence could not extend to her companies that were considered joint tortfeasors in the infringement. Therefore, Perry herself is excused from trade mark infringement on this ground, but her companies would still be liable.
The Court also affirmed the previous finding that headgear and footwear are not inherently covered in a trade mark registration for “clothing” (as is listed in the KATIE PERRY trade mark application), so Taylor is unable to bring an infringement action against anyone who uses a similar mark in relation to the goods of shoes and/or hats.
Unfortunately, the bad news didn’t stop there for the designer, with it also being found that 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 Taylor’s mark was applied for. Therefore, considering the homophonous nature of the name and only slight difference in spelling, 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 mark was therefore cancelled.
Take Aways
This case demonstrates many important lessons for trade mark holders.
Firstly, it is crucial to be specific about what goods you are claiming in your trade mark application. It can be helpful to speak to a trade marks attorney who has experience drafting these applications and is up to date on current laws and rulings in Australia about the best way to do this.
To use the own name defence in trade mark proceedings, the name in question does not have to be the person’s legal name – a nickname or stage name can count if the person is primarily known by that name.
Infringement proceedings can be messy, it’s important to take any cease and desist letters or notifications of infringement seriously and contact an attorney to advise and guide you through the process.
For a masterclass in celebrity trade mark protection, see our article on Taylor Swift’s intellectual property.
If you require advice on trade mark protection, or have found yourself in an infringement proceeding, feel free to contact the team at MBIP. Our IP attorneys would be happy to help.
