In April earlier this year, pop music icon Katy Perry (Katheryn Elizabeth Hudson) found herself in the Australian Court System. The reason? She was being sued by Australian fashion designer Katie Taylor (known professionally as Katie Perry) over trademark infringement for selling her merchandise with the name Katy Perry on it during her 2014-2015 Prismatic Tour.
On the face of it, Katie Perry and Katy Perry are not identical, so why would the Court hold it as trademark infringement?
In Australia, a registered trademark can be infringed if another person uses a trademark which is substantially identical with, or deceptively similar to the registered trademark. A trademark is deceptively similar if it nearly resembles the other trademark such that it is likely to deceive or cause confusion. The use of the infringing trademark must also be in relation to similar goods or services in which the trademark is registered. So, you couldn’t start a confectionary company called Codbury, a fast-food chain called Hungry Jocks, or a tech company called Macrosoft, as these are all too similar to the registered trademarks of established companies.
So, what happened with Katy Perry?
Back in 2009, Katy was trying to register a trademark for the phrase ‘Katy Perry’, a name which was deceptively similar to Ms. Taylor’s trademark for her clothing brand. Katy Perry tried to push the fashion label away by issuing a cease-and-desist letter, but before further action could be carried out, Ms. Taylor’s trademark entered the official register in July. There were minor squabbles between the two after this, but ultimately the fact that the two trademarks were not operating in the same goods or services meant there was no reason they couldn’t co-exist.
Fast forward to the 2020s, when it was Ms. Taylor’s turn to bring legal action against the pop star for trademark infringement, which was met with a crossclaim by Katy Perry’s representatives seeking that Ms. Taylor’s trademark be cancelled as the singer already had a reputation attached to it prior to Ms. Taylor applying to register it.
Unfortunately for the Pop icon, Markovic J held against the crossclaim on the grounds that although Katy Perry did have a reputation prior to Ms. Taylor’s application, this in relation to entertainment and music, not clothing/fashion. Further, Katy Perry was found to have infringed on Ms. Taylor’s trademark by using the deceptively similar name on her tour merchandise, straying into the same goods as Ms. Taylor’s trademark is registered for.
So what happens now? Well, assuming Katy Perry’s team don’t appeal the decision, her merchandise company Kitty Purry will be liable for damages to Ms. Taylor for the infringement. For future tours, Katy Perry’s legal team may be able to negotiate some co-existence with Ms. Taylor, allowing the pop star to sell merchandise exclusively at her shows while in Australia. But for now, at least, small business owners can sleep tight knowing that Australia’s legal system will not play favourites with celebrities, even if they are coming at you like a Dark Horse.
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Disclaimer
This blog provides general information and is not intended as legal advice specific to your circumstances. Please feel free to seek our professional legal advice if you have any questions, concerns and/or queries.
