Katie Perry v Katy Perry trade mark saga heads to the High Court

Reputation in a trade mark is one of the issues to be decided by the High Court when it hears the appeal of an Australian fashion designer Katie Taylor against a decision by the Full Federal Court to cancel her trade mark of ‘Katie Perry.’ This is the latest development in a protracted trade mark battle between the fashion designer and the international pop star Katy Perry.

Taylor, whose birth name is Katie Perry, designs and sells clothes under ‘Katie Perry’ and had traded under the name since late 2006. The name was registered as a trade mark in 2008.

Katy Perry, whose real name is Katheryn Hudson, is an international pop star with a successful music career. She also owns and controls a number of companies engaged in commercial activities such as merchandise sales and licensing.

Both parties have registered trade marks for Katy Perry and Katie Perry in separate classes however Taylor is the registered owner of ‘Katie Perry’ trade mark in the clothes category.

Professor Michael Handler is from the Faculty of Law & Justice from the University of New South Wales.

“In trade mark law, we don’t simply look at who made first use of a mark anywhere in the world,” he says.“A key issue is who made first use of it in Australia.”

Handler points out that a key issue at trial and in the appeal, was about the validity of the registered trade mark for the Australian designer.

“She was the first user of ‘Katie Perry’ on clothing, she applied to register ‘Katie Perry’ for clothing with a priority date in September 2008…,” he says.

What is a trade mark and what can be protected?

“A trade mark is defined under the Trade Marks Act, which is Commonwealth legislation. … In essence, it’s a sign that’s used or intended to be used by a trader to differentiate its goods or services from those of others,” says Handler.

“There are a couple of elements captured there. One is the notion of a ‘sign’. Usually that’s a word, or it could be a logo, or a word and logo combination. It can be something more exotic at times, like an aspect of packaging or a shape, or a colour…,” he says.

Registration of a trade mark does not just protect the word or the logo. “We’re protecting it when it serves this very specific function – when it’s used in trade to differentiate goods and services from those of others.

“I think that what’s interesting in this dispute is that it involves personal names as trade marks,” he says.

Jason Sprague, corporate and intellectual property lawyer and Partner at Bartier Perry lawyers agrees. “You can trade mark all sorts of things these days. You can even trade mark smells but there’s only two of them on the register. And one of them, I always find very amusing is a pine scent for golf tees … colours can be quite difficult. Shapes are becoming more readily accepted …

“In terms of your own personal name, you do have certain rights to use your own name if it’s done in good faith, but it can be difficult if your name is a common name as well,” he explains.

Handler observes that while it is possible to register your name as a trade mark, there are steps you have to take to satisfy the Trade Marks Office that your mark is “sufficiently distinctive.”

“The more common the name in question, the harder it is to make that case,” explains Handler.

Central issues in the dispute

“[W]hat the American Katy Perry and her associated entities have been arguing is that if you go right back to that priority date of September 2008 … there was a sufficient reputation in the ‘Katy Perry’ trade mark so that any use by the Australian trader of ‘Katie Perry’ in relation to clothing would have been likely to have caused confusion at that time,” explains Handler.

“The judge at trial said that she didn’t think that the reputation in the ‘Katy Perry’ mark was such that at September 2008 any Australian consumers of the applicant’s ‘Katie Perry’ clothing would have been confused …

“This was mainly because the reputation of ‘Katy Perry’ was thought to be in relation to entertainment and music, which the judge did not consider to be related to clothing,” he says.

Handler explains the finding was overturned on appeal. “[T]hat switch is absolutely critical to what’s now before the High Court,” he says.

The Full Court of the Federal Court found the ‘Katy Perry’ mark had “sufficient reputation such that … consumers who saw ‘Katie Perry’ on someone else’s clothes would have been confused about a relationship with the American celebrity …

“The Full Court said that the trial judge had overlooked the common practice of pop stars selling branded clothes at concerts and launching clothing labels,” explains Handler.

The central issues to be examined by the High Court relate to three sections of the Trade Marks Act (the Act). The sections deals with a trade mark that’s similar to another trade mark with an established reputation in Australia (section 60), amendment or cancellation of a trade mark where use of the trade mark is “likely to deceive or cause confusion” (section 88(2)(c)) and rectification where the registered owner of the trade mark is not at fault (section 89).

As Sprague explains, “[L]ooking at section 60 … the way it’s been interpreted by the Full Court is very broad. It takes into account a person’s reputation.

“[M]y view is, I think Justice Markovich got it right in the first instance … it’s about the trade mark reputation, not the reputation more broadly. [T]he interpretation of the Full Court gives an incredible amount of power to famous people and large corporations even when they’re not in those particular spaces … that extension is a very powerful thing,” he says.

Sprague points out the purpose of trademarks is to allow a person to identify particular goods and services by a brand or mark and to estabilsh a reputation for those goods and services by use of that mark. However, “…if you’re not using the mark in that space, why should you have protection just because you have fame or notoriety in a different space which could be unrelated.”

According to Sprague, when you look at the wording of section 60, the text is clear that the reputation is in the trade mark rather than the individual or person. For individuals and small businesses seeking to enforce their trade mark, it can be difficult. “This is an exceptional case going to the High Court,” he says.

Is litigation the answer?

While the circumstances of this case may be unique, litigation is often the last resort in trademark disputes. In Sprague’s experience, it may often be more worthwhile or economical for the party to just rebrand. “I’ve acted for some very small businesses and individuals and it’s difficult. … [Y]ou make a decision, sometimes commercially, to help them out and discount your fees or whatever to move it along … but there have been some situations where it is just too expensive,” says Sprague.

“It’s a difficult process. Any sort of legal dispute is draining, not just economically but also emotionally. That’s what people often forget.”

He believes the Full Court’s interpretation of section 60 is “too broad,” and it undermines the protection the provision should provide to everyone including small and medium sized businesses as well as individuals. In terms of section 88(2)(c), he admits that he can see both sides to the argument, but he believes that people these days are more aware. He points out there is an unspoken or implied understanding that there those who “sail very close to the wind with famous trade marks and people …

“I think people are more attuned to that sort of deception. I don’t think they’re as easily confused or deceived as they used to be,” says Sprague.

As for the outcome, the High Court will be required to examine some difficult issues that it has not examined before. Handler says it’s hard to predict where the court might go on some of the issues. “[I]t could be that the High Court might reach a conclusion that confirms existing law and practice and it might not actually lead to a very great change in the law. …

“[T]hey might perhaps take a different approach to the issue of reputation or to the section 89 discretion. [I]f that’s the case, the case potentially could make quite a big impact and reshape our understandings of the role of reputation and the role of the discretion in cancellation proceedings.”

Image: Katy Perry in 2024 – Source WikiMedia Commons under creative commons.