Australia: What’s in a name? Trade mark infringement turns Katy Perry’s teenage dream into a nightmare

Aptly described as a “tale of two women, two teenage dreams and one name” this is a long-standing dispute between the popstar and American singer-songwriter Katy Perry (who we will refer to as the Popstar) and an Australian designer Katie Jane Perry (who we will refer to as the Designer).

On 21 April 2023, Markovic J of the Federal Court of Australia (Federal Court) handed down judgment in Taylor v Killer Queen, LLC (No 5) [2023] FCA 364, finding that the Designer’s trade mark KATIE PERRY was infringed by companies owned and operated by the Popstar. The Popstar, through these companies, promoted and sold clothes and merchandise bearing the mark KATY PERRY.

Notably, Markovic J clarifies what must be borne in mind when comparing goods of a registered trade mark to the infringing goods in order to determine if the goods are the same or are of the same description as the registered goods.

This case and other recent cases highlight the importance for traders to pay careful attention to the specification of goods and services when filing trade mark applications.

Background

Since 2007, the Designer has designed and sold clothes under her birth name “Katie Perry” in Australia. In 2008 the Designer applied to register the trade mark “KATIE PERRY” (KATIE PERRY Mark) for ‘clothes’ in class 25.

The second respondent in this case was the Popstar. Born Katheryn Elizabeth Hudson, the Popstar adopted the stage name Katy Perry for her professional music career and associated commercial activities including merchandise sale and licensing. The other respondents in the case were companies owned and controlled by the Popstar through which the Popstar conducts associated commercial activities.

In May 2009, the Popstar became aware of the Designer’s application for the KATIE PERRY Mark. The Popstar’s career had recently taken-off and she was becoming popular around the world including in Australia. The Popstar was scheduled to perform in Australia as part of her world tour in August 2009. Concerned that the Designer may be attempting to obtain financial advantage based on the Popstar’s reputation, the Popstar opposed registration of the KATIE PERRY Mark and sent a cease-and-desist letter to the Designer in relation to use of the mark.

Around the same time, the Popstar filed an application to register the trade mark “KATY PERRY” in classes 9, 25 and 41 including in relation to clothing items such as “shirts, t-shirts, pants, dresses, underwear…”. IP Australia rejected the application in class 25 on the ground that it was identical to or closely resembled the KATIE PERRY Mark.

The parties engaged in lengthy correspondence and at one point the Popstar tried to negotiate co-existence. The Designer refused and took her story to Australian media outlets. Following significant media coverage and the impending concert in Australia, the Popstar abandoned negotiations and withdrew the opposition to registration of the KATIE PERRY Mark. Consequently, KATIE PERRY Mark achieved registration in class 25 and the KATY PERRY Mark could only proceed in classes 9 and 41.

Despite registration of the KATIE PERRY Mark, the Popstar promoted and sold KATY PERRY branded merchandise and clothes in Australia since 2009. This continued for over 10 years until the Designer received litigation funding to commence infringement proceedings against the Popstar and her companies.

The Federal Court Proceedings

In the proceeding it was alleged that the Popstar and her companies had, under section 120 of the Trade Marks Act 1996 (Cth) infringed the KATIE PERRY Mark by promoting, offering for sale, or suppling clothes or goods of the same description as clothes bearing the mark KATY PERRY. There was no dispute that the mark KATY PERRY is substantially identical or deceptively similar to the KATIE PERRY Mark.

In her defence, the Popstar successfully relied on section 122(1)(a) of the Act, which provides that a person does not infringe a registered trade mark when the person uses in good faith their own name. The Popstar’s companies were unsuccessful in relying on any defence and were held to have infringed the KATIE PERRY Mark.

The Popstar and one of her companies also brought a cross-claim seeking cancellation of the KATIE PERRY Mark and rectification of the Register on the grounds that at the time the Designer made the application for the registration, the Popstar had grounds to oppose its registration. The cross claim was dismissed.

The infringement claim

The Designer was able to establish only some of her trade mark infringement allegations, namely that:

• The Popstar infringed the Applicant Mark by promoting clothes, merchandise, and costumes on various occasions in 2013, 2014 and 2018 on Facebook and Twitter; and
• Kitty Purry Inc (one of the Popstar’s companies) infringed the KATIE PERRY Mark as joint tortfeasor by advertising, offering for sale and selling clothes and merchandise bearing the KATY PERRY mark during the Australian leg of the Popstar’s Prismatic Tour and at pop-up stores in Sydney and Melbourne.

Goods of the same description

Section 120 of the Act provides that a registered trade mark is infringed if a substantially identical or deceptively similar mark is used in relation to:

• the goods of the registered trade mark; or
• goods of the same description as the goods of the registered trade mark.

Therefore, whether the merchandise sold in Australia bearing the KATY PERRY mark were clothes or goods of the same description as clothes became an important consideration. The disputed categories of merchandise were headgear, party costumes, masks, shoes, jewellery, and bags (Disputed Goods). Expert evidence was led in this regard.

Markovic J first considered the description of class 25 goods in Part 1 of Sch 1 of the Trade Mark Regulations 1995 (Cth) (Regulations) i.e., “clothing, footwear, headgear”. Her Honour found that it is apparent that class 25 draws a distinction between clothes, footwear, and headgear. It supports the construction that clothes mean “garments which cover the body but not the extremities of feet or the head”. An interested trader viewing the KATIE PERRY Mark on the Register of Trade Marks would think that the selection of “clothes” excludes other goods covered by that class i.e., footwear and headgear. Therefore, shoes, slippers, hats or caps in the Disputed Goods were found not to be the same as clothes despite of belonging to the same class.

The question then was if these were goods of the same description as clothes. Markovic J held that:

• footwear does not belong in the same product category as clothes. In the fashion retail trade, clothing and footwear departments are often segregated and managed by persons specialising in those areas;
• headwear or hats and decorative masks and headgear are displayed in the clothing section but require a different method of manufacturing, different fabric and specific expertise. These are more likely to be accessories and are not of the same description as clothes;
• similarly, novelty jewellery, wristbands, bracelets and necklaces and handbags and purses, bags and backpacks are not goods of the same description as clothes owing to the difference in manufacturing procedure, fabric and utility.

The Respondents were held to not have infringed the Applicant Mark in relation to those goods.

Defence: use of name in good faith

Section 122(1)(a) of the Act sets out a defence for persons who, in good faith, use their own name as a trade mark. Markovic J clarified that only the person who goes by or uses that name has the benefit of this defence. In this case that person was only the Popstar and not companies. It was held that it does not matter that ‘Katy Perry’ is Popstar’s adopted or stage name – not her legal name.

As to the question of good faith, it was held that the circumstances in which Popstar used her name did not indicate lack of good faith. The Popstar adopted the name ‘Katy Perry’ when there was no reputation in the KATIE PERRY Mark and used it in relation to clothes under the belief that there was no likelihood of confusion.

Cross-claim

Markovic J was satisfied that the Popstar had acquired a reputation in the KATY PERRY mark before the KATIE PERRY Mark was filed. That reputation was however in relation to entertainment and music and not in relation to clothes. Further by December 2019, the Popstar had acquired significant reputation such that a purchaser of clothes bearing the mark KATY PERRY would not be caused to wonder if there is a connection with the KATIE PERRY Mark. Further, no evidence of actual confusion was tendered.

Grounds for cancellation of the Applicant under the cross-claim were therefore not made out. Markovic J commented in this regard that the Popstar is a victim of her own success.

Relief

Final orders are yet to be made, however, Markovic J has commented that laches and delay on part of the Designer in bringing the proceedings will be considered when determining relief.

Key Takeaways

This decision is very important in context of:

• paying particular attention to the specification of goods/services both while conducting clearance searches and while contemplating infringing actions;
• Importantly for the fashion and retail industries this case establishes clear delineations between types of goods;
• clearance searches should be conducted before commencing use of a trade mark. If there are existing registered marks that are substantially identical or deceptively similar in relation to the same goods or goods of the same description, then it is important to negotiate co-existence and secure registration before commencing use;
• using one’s own name as a trade mark – only the person that goes by that name has the advantage of this defence.