Scales of justice and a gavel on a desk

The Tale of Two Perrys - A Showdown Over Trademarks

By James Wan

In a world where Katy Perry and Katie Perry are two different people, how does one claim rights over the other? Sounds like a teenage dream, doesn’t it? But it’s not; it’s a legal puzzle that recently found its way into the Federal Court of Australia.

In the case of Taylor vs Killer Queen, LLC (Fifth Edition, 2023), the court had to untangle a tricky situation. It’s the story of two Perrys - the popstar Katy Perry, known around the globe, and the Australian fashion designer Katie Taylor, who was born as Katie Perry.

Act One: The Background

Taylor has been selling clothes under the brand “Katie Perry” in Australia since 2007. She had the foresight to trademark the name “Katie Perry” in relation to clothing (class 25 in the trademark parlance) in 2008.

Meanwhile, Katy Perry (the popstar one, remember?) has used her stage name in her music career and related commercial activities since 2002.

In 2009, a year before her Australian tour, popstar Perry discovered Taylor’s trademark. Worried that Taylor might benefit from her stardom, Perry moved to oppose the “Katie Perry” trademark and demanded Taylor stop using it. At the same time, Perry tried registering “Katy Perry” as a trademark for her music and clothing. But IP Australia didn’t see eye to eye with Perry. They rejected her application, claiming it was too similar to Taylor’s trademark.

A protracted negotiation followed between Perry and Taylor, but Taylor held her ground. Perry eventually had to withdraw her opposition to the “Katie Perry” trademark and remove clothing from her trademark application. This cleared the way for Perry’s music trademark.

Despite these events, Perry continued to sell merchandise under various “Katy Perry” trademarks for over a decade in Australia. In 2019, Taylor launched legal proceedings against Perry and her related companies, alleging infringement of the “Katie Perry” trademark since 2013.

Act Two: The Court’s Verdict

The Infringement Question

Taylor claimed that Perry and her companies used her trademark to sell similar merchandise in Australia. The court was interested in something other than if the Perry trademarks were confusingly similar to Taylor’s trademark. It wanted to figure out whether Perry’s activities in Australia actually infringed Taylor’s trademark and if Perry could use any defences under the Trade Marks Act 1995.

The court had to decide whether products like hats, party costumes, footwear, jewellery and bags were close enough to be considered similar to clothing. Ultimately, they decided these items were in different categories than clothing. Therefore, Perry and her companies were off the hook regarding these products.

However, Perry and her companies did infringe Taylor’s trademark by selling clothing under the “Katy Perry” trademarks in Australia.

The Defence Game

Perry and her companies tried to argue that they used Perry’s name in good faith. But the court wasn’t buying it. They decided this defence only applied to Perry as an individual, not her companies. So, while Perry herself didn’t infringe Taylor’s trademark, her companies did.

They also tried to use another defence. This one says that if they could have registered a similar trademark, they wouldn’t be infringing. But the court shot this down too. They found that Perry and her companies didn’t use the “Katy Perry” trademarks in relation to clothing beyond just filing the applications.

The Countermove

Perry and her companies made a bold countermove. They tried to cancel Taylor’s trademark, arguing that Perry had a reputation associated with the Perry trademarks before Taylor filed for her trademark. But the court disagreed. They said Perry’s reputation was linked to her music and entertainment career, not clothing.

The Aftermath

So, what happens next? Taylor gets to claim damages, though how much is still in the air. The court also told one of Perry’s companies to stop infringing Taylor’s trademark.

But the story doesn’t end there. Katy Perry has appealed the decision. The saga of the two Perrys continues…

The Moral of the Story

This case shines a light on the importance of protecting your brand. Here are a few takeaways:

  • Register your trademarks early to protect your brand and reputation.
  • Before choosing your branding or trademarks, ensure you’re not stepping on someone else’s toes. Do a clearance search to make sure.
  • Be careful when specifying the goods and services associated with your trademark.
  • Keep an eye out for potential infringements of your trademarks and act swiftly if you see any.

In short, protecting your brand isn’t just a teenage dream. It’s a reality of business. I hope this tale of two Perrys helps you navigate the world of trademarks with more clarity. What do you think?