Katie Perry v Katy Perry - International fame does not defeat Australian registered trade mark

A long running trade mark battle between global pop star Katy Perry (the Entertainer) and Australian fashion designer Katie Taylor (the Aussie Designer) has finally reached its conclusion.  

In a closely watched decision, the High Court of Australia ruled by a 3–2 majority that the Aussie Designer can keep her registered Australian trade mark for “KATIE PERRY” for clothing, despite challenge by the internationally famous Entertainer.

The decision brings to an end a dispute that began in 2009 and provides an important reminder that trade mark rights can be determined by registration and priority dates – not simply by global fame. Even a world-famous celebrity may struggle to defeat an earlier filed Australian trade mark if they have not themselves filed for protection for their brand with respect to the relevant goods and services.

Background

The Aussie Designer was born Katie Perry, and started her own fashion label in Australia in 2007 using the trade mark "KATIE PERRY".  On 13 September 2007 the Aussie Designer applied to IP Australia to register a logo that incorporated the words "KATIE PERRY", but it was in the wrong class for clothing. That application did not ever proceed to registration.

On 29 September 2008, the Aussie Designer applied to IP Australia to register the plain words "KATIE PERRY" in class 25 for clothing (the Designer's Mark). The Aussie Designer was by this time aware of the Entertainer.

The Entertainer purported to oppose the Aussie Designer's application for the Designer's Mark (out of time) and on 21 May 2009 a letter of demand was sent by the Entertainer's lawyers to the Aussie Designer requiring the Aussie Designer to withdraw her trade mark application. The opposition did not proceed and the Aussie Designer did not withdraw her trade mark application.

On 26 June 2009 the Entertainer's company applied to register the word mark "KATY PERRY" (the Entertainer's Mark) with respect to musical recordings, entertainment and clothing, but had to relinquish the claim for clothing following an adverse report from the examiner given the Aussie Designer's earlier application for the Designer's Mark. The application for the Entertainer's Mark proceeded to registration with respect to musical recordings and entertainment only.

There was some discussion between the parties about a co-existence agreement, but the terms offered by the Entertainer were not acceptable to the Aussie Designer and, on 20 December 2019, the Aussie Designer commenced an action in the Federal Court of Australia against the Entertainer and her companies claiming infringement of the Aussie Designer's trade mark by the importation and sale in Australia of "KATY PERRY" branded clothing. The Entertainer cross-claimed for cancellation of the registration for the Designer's Mark.

The Aussie Designer was successful at first instance, however the decision was appealed to the Full Federal Court which found in favour of the Entertainer. The Aussie Designer subsequently appealed to the High Court.

The High Court's decision

The Entertainer was seeking cancellation of the Designer's Mark on two grounds.  

Firstly, section 88(2)(a) of the Trade Marks Act 1995 (Cth) (the Act) provides a ground for cancellation on the basis that circumstances existed at the priority date such that the application might have been successfully opposed. One such ground for opposition relied upon by the respondents was section 60 of the Act, which provides that the registration of a trade mark may be opposed on the ground that another well known trade mark (whether registered or unregistered) had, before the priority date of the application in question, acquired a reputation in Australia, and because of the reputation of that other trade mark, the first-mentioned trade mark would be likely to deceive or cause confusion.

Secondly, the Entertainer relied on section 88(2)(c) of the Act which provides that a registration may be cancelled if, because of the circumstances applying at the time the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion.  

In this case, the relevant time for assessing the application of section 88(2)(a) with section 60 was at the time the Aussie Designer filed the application for the Designer's Mark, i.e. 29 September 2008, while the time for assessing the application of section 88(2)(c) was much later, i.e. 20 December 2019 being the time the Entertainer made a cross-claim in response to the Aussie Designer's infringement action. By 20 December 2019 the reputation of the Entertainer's Mark was stronger.

Justice Jagot, with whom Justices Steward and Gleeson generally agreed, found that the Entertainer did not make out the section 88(2)(a) / section 60 ground given that before the filing date of the Designer's Mark, there was no "KATY PERRY" branded clothing being sold in Australia by the Entertainer, and only a very limited range of clothing had been sold under that brand in the United States and other countries. This was despite that fact that the Entertainer had acquired a reputation in Australia before the priority date in respect of entertainment and recorded music.  

While there was no evidence of actual confusion, the court also considered the notional rather than actual use of the Designer's Mark by the Aussie Designer, "a concept which includes actual, intended and possible use of the trade mark if normal and fair use in each case".  In this regard it was relevant that the notional use by the Aussie Designer of "Katie Perry" branded clothing did not include dishonest use such as sale under the Designer's Mark of clothing printed with graphics or photographs of the Entertainer, or the names of the Entertainer's tours, albums or songs.

The majority also agreed that the ground under section 88(2)(c) was not made out. Justice Jagot agreed with the primary judge's evaluation that 10 years is a long time for two deceptively similar trade marks to be on the market in Australia with no evidence of any confusion. Justice Jagot considered that period was sufficiently long to support an inference that in fact it was not likely that people had been or would be deceived or confused.

Justice Steward also considered that section 88(2)(c) had not been made out because it was only as a result of the Entertainer's infringing conduct (by importing and selling "KATY PERRY" clothing after the priority date for the Designer's Mark) that any likelihood of confusion would have arisen.  A conclusion to the contrary would have the effect of rewarding the "assiduous efforts of an infringer".

Justice Gleeson also pointed to the fact that it was relevant that the reputation of the Entertainer's Mark with respect to entertainment and musical recordings was acquired only relatively shortly before the date the Aussie Designer filed her application for the Designer's Mark, and that there was no evidence that, as at 20 December 2019, the Entertainer's Mark had acquired a reputation with respect to clothes.

Key messages

This decision emphasises the value of registered trade mark protection, even for small businesses.

When it comes to trade mark protection, timing can be everything so don't delay and also get professional advice so that the application is more likely to be successful and provide you with the required scope of protection.

The priority date secured for your application by filing determines not only your rights as against later applicants, but is also the relevant date for determining whether, at that time, the state of affairs is such that the registration could be opposed or later cancelled.  For example, the evidence in this case indicated that the Entertainer's reputation in Australia did not start to build until around November 2007 and into 2008, being after the priority date of the Aussie Designer's original unsuccessful application for the logo.  

It was only later that the Aussie Designer understood that she should file in class 25 for clothing and that a registration for plain words provides more protection than a logo.  At the later time of filing the application for the Designer's Mark on 29 September 2008, the Aussie Designer had become aware of Katy Perry's reputation and the practice of musicians selling clothing and other merchandise at concerts. This was taken into account by the minority. Issues such as these may not come to the surface until such time as a registered owner seeks to enforce their trade mark rights.  It is common for an infringer to cross-claim for cancellation of the trade mark registration.

Famous entertainers and sports people and other well known personalities should also heed the impact of this decision in terms of protection of their brands given they may not be able to rely on their reputations alone.  Filing a trade mark application in Australia as soon as possible with respect to all goods and services in respect of which such personalities intend to use their brand is recommended. Trade mark registrations in Australia only become susceptible to removal on the basis of non-use after 3 years.

For more information regarding trade mark protection or enforcement, or for any assistance regarding intellectual property more generally, please contact a member of Thomson Geer's Intellectual Property team.

Author

This article was written by Partner Katrina Chambers, a specialist intellectual property and commercial lawyer at Thomson Geer.

‍