KATIE PERRY v. KATY PERRY: Australian fashion designer wins after a 16-year legal battle with US pop star

In a majority (3:2 split) decision handed down today, the High Court of Australia has clarified the operation of the opposition ground under section 60 and the cancellation grounds under section 88 of the Trade Marks Act 1995 (Cth) (TMA) in the long-running dispute between Australian designer Katie Taylor (nee Perry) and the US pop singer Katy Perry.

The Court refused to cancel the Designer’s Australian trademark registration for KATIE PERRY in class 25 (clothing), which will effectively allow the Designer to continue using her trademark. In reaching its decision, the Court was influenced by a concern to avoid construing the TMA in a way that would reward the Singer and her associated companies as ‘assiduous infringers.’

The matter will be sent back to the Federal Court of Australia to determine other issues, which include the Designer’s 10-year delay in bringing her case against the Singer.

Background

The Designer owns an Australian trademark registration for KATIE PERRY for clothing, filed on 29 September 2008.

The Designer alleged that the Singer and her merchandise company infringed that registration by using KATY PERRY on clothing sold in Australia. At first instance, the Court found in favor of the Designer, holding that the Singer had engaged in flagrant trademark infringement.

On appeal, the Full Federal Court overturned that decision and cancelled the Designer’s trademark registration.

Decision

Why the section 60 ground failed

Under section 88(2)(a) of the TMA, a trademark registration may be cancelled on any ground on which it could have been opposed at the time of filing.

The Singer argued that, as at September 2008, she had already acquired a reputation in KATY PERRY in Australia and, because of that reputation, use of KATIE PERRY would be likely to deceive or cause confusion, giving rise to a ground of opposition under section 60.

The Court confirmed that this reputation must be tied to certain goods or services.

While the Singer had established a reputation in Australia in 2008 for the trademark KATY PERRY for entertainment services and recording discs, the Singer had not sold any clothing in Australia and had no reputation in clothing. The Court held that the Singer’s reputation for entertainment services and recording discs would not cause confusion with the Designer’s registered trademark for clothing.

As a result, the Singer did not have a basis to oppose the application under section 60 at the time of filing and could not rely on section 88(2)(a) to cancel the registration.

Why the section 88(2)(c) ground failed

Under section 88(2)(c) of the TMA, a registration may be cancelled if, because of circumstances existing at the time the cancellation application is filed, use of the registered trademark is likely to deceive or cause confusion.

The Singer argued that by December 2019, her reputation in KATY PERRY, including in relation to clothing, was so significant that any use of KATIE PERRY on clothing would be confusing.

However, the Court found that the absence of evidence of confusion after a 10-year period of concurrent use supported the inference that it was not likely that people had been or would be deceived or confused by use of the Designer’s registration.

Implications

The decision provides important clarification with respect to the relationship between reputation in a mark and the likelihood of deception or confusion among consumers.

In particular, the High Court has confirmed that:

• Reputation in a trademark must be tied to particular goods and services. It is not reputation in a general sense.
• Evidence must support a likelihood of confusion between the reputation in such goods or services and the goods and services covered by the applied-for mark.
• Where two marks have coexisted in the market for many years without any evidence of confusion, the inference is that the marks are unlikely to deceive or cause confusion.

Key lessons

1. Trademark registrations remain vulnerable to cancellation even long after grant.
2. Common law reputation will not be given an expansive scope divorced from the goods or services actually used.

A copy of the full decision can be accessed here. 

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