Global pop star Katy Perry has won a long-running trade mark dispute with the Sydney-based fashion designer Katie Perry.
Katie Jane Taylor designs and sells a range of sustainable loungewear under her maiden name, Katie Perry. The fashion designer has a trade mark for KATIE PERRY, which covers goods including clothes (the “Mark”). She first launched a trade mark infringement action against American singer-songwriter Katy Perry on the basis of the latter’s merchandise sold during her Prismatic concert tour in 2014-2015. Katy Perry, who rose to fame in 2008, is one of the top-selling music artists, with popular songs including California Gurls and Firework. Her fashion choices have also been the subject of much media attention (see e.g. here and here). In 2014 and 2015, Katy Perry did a concert tour in Australia, for which she sold KATY PERRY merchandise (in-store and online).
The Australian Court initially found in the designer’s favour. However, on appeal, the Federal Court in Sydney held that the Mark must be cancelled. A major part of the Court’s reasoning was that the name - although it was spelt slightly differently (Katie Perry vs Katy Perry) - looked similar and sounded similar enough to "deceive" and "cause confusion" for consumers. The name Katie Perry, in the Court’s opinion, is globally synonymous with the singer.
Despite recognising that both parties had worked hard to create their respective brands, the Court noted:
"Whilst some die-hard fans of Katy Perry may recognise the incorrect spelling, the ordinary consumer with an imperfect recollection … would be likely to be confused as to the source of the item and wonder whether it was associated with the performer. As the fame of one grew internationally, the other became aware of her namesake and filed a trademark application.”
The Court went on to add further background to the case, stating that the pop singer had not only used her name as a trade mark in good faith during her 2014 Prismatic tour, but had also been using it as her brand for years before the fashion designer launched her business.
In 2009, Ms Perry sent Ms Taylor a cease and desist letter requesting her to stop using the Mark, due to the similarities. When this was ignored, Ms Perry suggested that they come to an agreement on how both brands could co-exist, but her offer was rejected, despite it appearing to offer both parties the most sensible outcome.
The appeal Court unanimously overturned the findings of the lower Court and ordered that the Mark be cancelled.
COMMENT
Trade marks are at the heart of protecting fashion brands, as they enable consumers to identify and associate with that brand. The outcome of this case is therefore likely to be a blow for Ms Taylor, a relatively small fashion brand, particularly when compared against Ms Perry, a global pop star with undoubtedly more influence, and likely more capital to spend in fighting such a dispute. Nevertheless, considering Katie Perry’s global brand, the outcome of this case is not surprising, albeit it is an outcome which could have been avoided with pursuing sensible commercial discussions, such as Ms Perry’s co-existence.
This case also highlights the limitations of the “own name” defence, which enables people to use their own name in good faith, even if it is similar to an existing registered mark. However, the defence is not absolute, and only applies when the name does not cause confusion, or exploit the reputation of, the name. Ms Taylor challenged the first Court’s findings that Katy Perry - whose birth name is Katheryn Elizabeth Hudson - could invoke the “own name” defence, on the basis that Katy Perry is not her legal name.
This case is another example of how important it is, in the crowded and competitive fashion market, that brands consider the whole spectrum of intellectual property rights, including trade marks in particular.
Contact our IP fashion team for more information.
