By Brand Heeler

Problems caused by sharing nearly the same name.

The Federal Court of Australia has held that US singer Katy Perry ‘deliberately’ infringed an Australian clothing brand. In the deliciously named case of Taylor v Killer Queen, Aussie loungewear designer Katie Taylor (née Perry) sued Katy Perry (née Katheryn Hudson) and her merchandising companies to enforce her registered trade mark KATIE PERRY.

A trade mark dispute emerged between renowned American singer and songwriter Katy Perry and Australian fashion designer Katie Perry, highlighting the clash of names in the fashion realm. While Katy Perry ventured into the fashion industry with her line of clothing, accessories, and fragrances, Katie Perry had been running her own fashion label since 2006. The conflict arose when Katy Perry’s lawyers issued a cease and desist letter to Katie Perry’s company, alleging trade mark infringement. Although both individuals had successfully obtained trade mark registrations for their respective names in different countries and classes of goods and services, tensions escalated. In 2019, Katie Perry sought the removal of Katy Perry’s trade mark registration, citing similarities and potential consumer confusion. The matter eventually made its way to the Federal Court of Australia for resolution.

The two women had already crossed swords in 2009 when Katy P sought to oppose Katie T’s 2008 Aussie trade mark application. That opposition was eventually withdrawn and Ms Taylor’s application was granted. She continued to manufacture and sell her range of clothing as she had since 2007. However, she did not apparently have the financial wherewithal to enforce her registration against Ms Perry who was simultaneously selling KATY PERRY brand clothing into the Australian market.

No real chance of peaceful co-existence

That changed when Ms Taylor managed to secure litigation funding, some 10 years later. She commenced proceedings under the Australian Trade Marks Act 1995 (Cth) on the basis that Katy Perry and her associated companies were importing, manufacturing and selling infringing goods in Australia. She also claimed this infringement was ‘flagrant’ (and therefore deserving of additional damages) on the grounds that Ms Perry had not used her KATY PERRY brand in Australia prior to the opposition proceedings – in other words, at all relevant times Katy Perry had been aware of Katie Taylor’s rights and had proceeded regardless. This course of action was particularly disapproved of by the judge, Markovic J, who described it as ‘deliberate’ and a ‘calculated risk’.

Katy Perry attempted to settle the claim by suggesting a coexistence agreement but, given the brands in question were substantially the same and referred to the same or similar goods, this was perhaps always going to be a non-starter. Her manager then tried to deny either that members of the public would confuse the two brands or that Ms Taylor’s trade mark was in any jeopardy. The judge seemed somewhat sympathetic to this, accepting that Katy Perry had not acted cynically. However, Her Honour held that this did not excuse the infringing conduct, especially given the absence of any apparent arguable defence.

Extra damages for flagrant infringement

Markovic J went on to find that Katy Perry’s sales of branded merchandise during various Australian tours and via internet sale to Australian fans amounted to trade mark infringement. Ms Taylor was therefore entitled to an injunction and damages, including additional damages for the flagrant ‘calculated disregard’ of her rights.

We’re old enough to remember when the names ‘Taylor’ and ‘Killer Queen’ meant a rather different genre of music but we nevertheless approve of this judgment. There’s always a sense of ‘might makes right’ in any litigation, so it’s good to see a small business successfully asserting their intellectual property rights against bigger opponents. It’s also a useful reminder of the availability of additional damages in Australian trade mark law. Katy Perry may now be regretting the day she dissed a girl…

This article contains our thoughts and opinions on an issue of general interest and is written from the perspective of Australian and/or English law. It is not legal advice and is not provided in the context of a solicitor-client relationship. It may not even be relevant to your jurisdiction. No duty of care is assumed or accepted. Please carry out appropriate research and consult with a suitably qualified legal expert before taking any action or making any decisions.