Katie Perry triumphs over Katy Perry in trademark case in Australia
19 May 2023
On April 28, 2023, global pop superstar Katy Perry recently lost a trademark infringement case filed in 2019 by Sydney-based fashion designer Katie Taylor.
Taylor, who operates her business under her given name before marriage, first filed for trademark registration for her clothing line in 2008. The singer-songwriter had tried to prevent this with the help of her then-record label EMI and lawyers through a cease-and-desist in 2009 but eventually stopped. The same year, Taylor was granted trademark registration.
In 2019, Taylor filed a lawsuit against Perry for allegedly ignoring her trademark and selling Katy Perry clothing to the Australian public via Amazon, eBay and many others during the singer’s concert tours in the country in 2014 and 2018. The Australian court ruled that Perry, born Katheryn Elizabeth Hudson, breached the Australian designer’s trademark “Katie Perry.”
The court also found that Perry’s company Kitty Purry partially infringed the trademark of Taylor’s business. Therefore, the said company is required to pay for the financial damages.
“This seems to be the first time in Australia that the own-name defence was enlivened based on the use of a stage name – Katy Perry. However, that defence did not extend to authorized users of the name, particularly Kitty Purry, which was held to have infringed in offering clothing goods for sale under the mark Katy Perry,” said Ian Drew, a principal at Davies Collison Cave in Melbourne. “This reminds us of the importance of ensuring that marks, which are used under licence, are registered to benefit from the statutory defence to infringement and authorized user provisions in the act.”
“This case also illustrates the dangers which arise where a party uses a mark in the knowledge that such use infringes a third-party right,” added Janette Li, an associate at Davies Collison Cave. “In this case, the ‘calculated risk’ in using the mark for clothing in the face of prior rights led to injunctive relief against Kitty Purry and an entitlement to an additional damages award against all of the respondents in the case.”
According to Judge Brigitte Markovic of the Federal Court of Australia, Perry and her companies continued marketing and selling merchandise with the “Katy Perry” mark in Australia even after being aware of Taylor’s trademark, adding that doing so was a “calculated risk.”
Another issue, said Drew, was whether a trademark registration covering clothing goods encompassed the use of a mark for footwear.
“Interestingly, Justice Markovic concluded that footwear is not clothing and went further to conclude that clothing and footwear are not conflicting goods at all,” explained Drew. “This presents as concern for those in the clothing industry to ensure their trademark rights cover footwear and vice versa.”
-Espie Angelica A. de Leon