07 April 2025

Never really over? Aussie fashion designer appeals to High Court in trademark battle with Katy Perry

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Last November the Full Federal Court handed down its decision in the case of Killer Queen, LLC v Taylor [2024] FCAFC 149 (Appeal Case). It was the latest decision in an ongoing trademark battle between international pop singer Katy Perry (née Hudson) (Hudson) and Australian fashion designer Katie Taylor (née Perry) (Taylor). The case overturned a previous decision of Justice Markovic in favour of Taylor. However, Taylor has sought leave to appeal the decision to the High Court. Her application is set to be heard on April 11.

The story so far

Taylor, an Australian fashion designer, launched her ‘Katie Perry’ label in 2007, based on her birth name, and registered the trademark ‘Katie Perry’ (Taylor Trademark) in class 25 (clothing) in 2008.

Hudson adopted ‘Katy Perry’ as her stage name in the US in about 2002 and sought registration of ‘Katy Perry’ as a trademark in Australia in June 2009, in classes, 9, 41 and 25. The class 25 claim was then removed because of the Taylor Trademark. Hudson also proposed a co-existence agreement in 2009, which was rejected by Taylor.

In August 2009 Hudson launched a concert tour in Australia, during and after which KATY PERRY branded clothing and merchandise (Hudson Products) was sold at concert venues and online. In September 2019 Taylor issued a letter claiming Hudson and her companies (Killer Queen, LLC; Kitty Purry, Inc.; and Purrfect Ventures), had infringed Taylor’s Trademark by selling or authorising the sale of the Hudson Products. Taylor then commenced court proceedings.

Key issues considered

The dispute has seen the courts consider the following questions regarding trademarks and reputation:

Does a claim for ‘clothing’ in a class 25 claim also cover footwear and headgear? (Claim Issue)
The scope of the ‘own name’ defence under section 122(1)(a)(i) of the Trade Marks Act 1995 (Cth) (TM Act) and whether it:
- is only available to the person who goes by that name
- extends to stage names and pseudo names
  
  (Own Name Issue).
Was Hudson a joint tortfeaser as a director of her companies? (Tortfeasor Issue)
The availability of the honest concurrent use defence under section 122(1)(fa) of the TM Act (Concurrent Use Issue).
Did Hudson have a reputation in KATY PERRY in Australia for clothing before the priority date of the Taylor Trademark which could be grounds for cancellation of the Taylor Trademark under s.60 of the TM Act? (Cancellation Issue)
What considerations does a court give to exercising its discretion not to cancel a trademark and allow it to remain on the Trademarks Register under ss88 and 89 of the TM Act? (Removal Issue)

Decisions on key issues

Issue	First Case	Appeal Case
Claim	A claim for ‘clothing’ does not include ‘footwear’ and ‘headgear’. As ‘footwear’ and ‘headgear’ are specified separately in the IP Australia class claims list, they are separate to ‘clothing’. This decision meant Taylor was unable to sustain claims for infringement for footwear and headgear sold by Hudson and her companies.	Upheld on appeal
Own Name	The defence is only available to the person who goes by that name and not to third party traders, licensees or joint tortfeasors who use that person’s name under any authority. A stage name or pseudo name can be used for this defence provided it is the name by which a person is usually known. Hudson had chosen and used KATY PERRY in good faith and was recognised by that stage name. Although Hudson was found to have infringed the Taylor Mark by selling clothing, she was able to use the Own Name defence.	Upheld on appeal
Tortfeasor	Hudson was not a joint tortfeasor in respect of her infringing companies because she was a director of them.	Hudson was a joint tortfeasor in some circumstances because of the level of control and input she had on key decisions. Hudson had acted beyond her role as a director. She was closely involved in providing feedback on and approving the design and selection of merchandise to be brought on tour. Hudson ultimately avoided liability because the Court held the Taylor Trademark should not have been registered to start with (see comments on Cancellation Issues, below). If the Taylor Trademark had never been registered, there could be no infringement.
Concurrent Use	The defence is assessed at the date of the first alleged infringing conduct, which was determined here to be the date of Hudson filing her trademark application for KATY PERRY because there was no prior use of the mark on clothing. Hudson did not make any substantial use of her KATY PERRY trademark on clothing beyond filing trademark applications and could not demonstrate honest and concurrent use with the Taylor Trademark. The defence was therefore not made out.	Use of the mark KATY PERRY by Hudson was honest for similar reasons in determining her adoption and use of the name KATY PERRY. While mere lodgement of a trademark application is not use of a trademark, it was confirmed that the application filing date was the appropriate date to determine use. There had not been any ‘non-infringing’ use of the KATY PERRY mark in Australia for clothes as of 26 June 2009; therefore, the use was not ‘concurrent’, and the defence not made out.
Cancellation	Hudson had a reputation in the KATY PERRY mark in Australia when Taylor applied for registration of the Taylor Trademark, but it was as an entertainer only, as Hudson had not launched her clothing when Taylor’s Trademark was filed. S.60 requires consideration of whether people would be misled or confused because of the similarity of the marks. Justice Markovic determined consumers were not likely to be confused or deceived. Justice Markovic considered that by the end of 2019, the reputation in Hudson’s KATY PERRY marks was so significant that purchasers of clothes bearing the KATY PERRY mark would not wonder whether there was a connection with the Taylor Trademark. The Taylor Trademark was to remain registered.	Hudson had a reputation in KATY PERRY in Australia before the priority date of Taylor’s Trademark. It was incorrect to limit the scope of reputation to music and entertainment because it is common practice for pop stars to merchandise their brands into clothing lines. Too much emphasis was placed on the absence of evidence of actual consumer confusion, especially given the lack of confusion was also attributable to the minimal use of the Taylor Trademark by Taylor at the time she applied for registration. For s 60 of the TM Act, it is incorrect to assess confusion after the filing date of Taylor’s Trademark. The correct test is to consider the notional use of the Taylor Trademark at the time of registration. The Taylor Trademark should never have been registered because Hudson’s KATY PERRY mark had acquired a reputation in Australia before the priority date of the Taylor Trademark (29 September 2008), and therefore use of the Taylor Trademark was likely to deceive or cause confusion.
Removal	This issue did not need to be considered because Hudson had not established the relevant reputation.	To stay cancellation of the Taylor Trademark, any potential deception or confusion by using the Taylor Trademark must not arise through any ‘act or fault’ by Taylor. Even where adoption of Taylor’s Trademark was innocent, the interpretation of section 89 is to exclude any conduct that contributes to the deception or confusion. It is not confined to ‘blameworthy’ conduct. This is due to the inclusion of the word ‘act’ which includes a broader scope of conduct than just ‘fault’. The Court declined to cancel the Taylor Trademark because Taylor: knew of Hudson, her reputation and her KATY PERRY mark at the time Taylor filed for the Taylor Trademark knew it was likely music artists sold clothing and merchandise bearing their name, as it was common practice sought to align herself with Hudson to obtain benefit from Hudson’s reputation by posting on social media and referring to Hudson and titles to her songs, and such actions could deceive or confuse rejected Hudson’s proposal of a co-existence agreement where both parties could use their marks and instead commenced infringement proceedings, thus creating an issue for herself.

Key takeaways

Key takeaways from the decisions as they currently stand are:

Make sure class claims for ‘clothing’ are drafted with detail and include ‘footwear’ and ‘headgear’. Limit reliance on broad categories.
If you have an existing registration for ‘clothing’, that does not mean ‘footwear’ and ‘headgear’ will be protected. Accordingly, new applications to cover all appropriate goods should be filed.
Conduct a clearance search before adopting a trademark, which covers use outside of Australia, even in areas you may consider unrelated to your goods and services. This is needed to determine if there is significant reputation in the mark, which may have relevance in Australia. Otherwise, your trademark registration may be vulnerable to cancellation.
If you are a director and deeply involved in the operational aspects of the company, you could be held personally liable for the company’s trademark infringements.
The ‘own name defence’ under section 122(1)(a)(i) of the TM Act is not limited to your legal name. It can be a stage name or pseudonym, provided it is the name by which you are ‘usually’ known.
The bar has been raised for the honest concurrent use defence under section 122(1)(fa) of the TM Act now that evidence of use will be assessed at the date of the first alleged infringing conduct.
When determining if a person will be ‘deceived or confused’ under section 60 of the TM Act, evidence or proof of actual confusion is not required. It is the normal and fair use of the mark across all relevant goods or services that needs to be objectively considered.
Limited use of a trademark can result in its cancellation, particularly if there are similar marks and the registered owner cannot show sufficient reputation in the trademark.

What’s next?

This battle highlights the complexity of trademark law and the position of Australian-registered trademarks in the global market. The Full Court’s decision appears to significantly expand the rights of owners of well-known brands to non-related goods or services based on ‘common practice’ in an industry. It provides owners of well-known brands an increased ability to use their reputation to oppose, or in this case revoke, the registration of similar Australian marks in areas for which they don’t have or may not have intended at that time to obtain trademark registration in Australia.

Applying a ‘common practice’ test will benefit high profile sports, fashion and entertainment personalities. They now potentially have significant power to block others seeking registrations for items like clothing, food products, music and other products or services which famous personalities commonly put their name to. Large corporations who wish to diversify their service and product offerings and prevent others obtaining trademark registration are also likely to benefit from this approach. It will be interesting to see how this is applied in the future if Taylor’s application to the High Court fails.

Perhaps the Full Court’s decision was influenced by Taylor’s actions. On the one hand, she appeared to want to associate herself with Hudson’s reputation in the KATY PERRY mark, but then, on the other hand, sought benefit by alleging trademark infringement. Arguably sharp practices such as this go against the purpose of trademarks, which are designed to protect the goodwill and investment in trademarks.

As we wait for the determination of Taylor’s application to the High Court, we wonder if her appeal will be the ‘Dark Horse’ or if she needs to ‘Rise’ and ‘Roar’ again to overcome the ‘Hot N Cold’ decision of the Federal Court. One thing you can count on: we’ll be ‘Wide Awake’ as the next chapter unfolds.

Authors: Jason Sprague & Kimbeley Nguyen

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