Following a staggering 16-year trade mark dispute between Sydney fashion designer Katie Perry and American popstar Katy Perry, the Australian High Court recently found in favour of the designer.
This dispute began after the designer, whose given name is actually Katie Taylor, applied for her trade mark for ‘Katie Perry’ for clothing in September 2008, shortly after the singer rose to fame with her debut album. A month later, the singer then toured around Australia, and sold merchandise branded with ‘Katy Perry’.
With tensions brewing, the designer relented years later and issued a trade mark infringement claim against the singer in 2019. The designer won her claim in 2023 as the court held that the singer’s use of “Kitty Purry” during her 2014 tour was held to be infringing, though the singer appealed the decision a year later and enjoyed success in cancellation proceedings.
As with most contentious litigation, this matter was Never Really Over. With the designer appealing further, the Australian High Court who ruled that while the singer had established a significant reputation at the time of the designer filing her trade mark application in 2008, such reputation did not extend to clothing. Further, the singer’s own registered trade mark includes a limitation in the specification to exclude items of clothing from protection despite continuing to sell clothing. While the singer would otherwise have been allowed to sell clothing branded with her name, doing so would not have enjoyed the protection of her registered trade mark. With these facts in mind, the Australian High Court upheld the fashion designer’s trade mark registration with the judge’s making majority decision of 3:2.
Despite the decision in favour of the designer, the case has now been referred back to the Australian Full Federal Court on a case-management basis, which will allow the parties to narrow down procedural issues and determine costs following questions raised about why the fashion designer took so long to commence litigation.
The designer posted a statement on the Katie Perry website and said “This case has never just been about a name…It has been about protecting small business in Australia, for standing up for what is right and showing that we all matter.”
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
