Katie Perry v Katy Perry: What Trade Mark Rights are there to a Name?

That question is currently underway in the NSW Federal Court as part of an ongoing trade mark battle between Australian fashion designer, Katie Taylor, and American pop singer Katy Perry. 

Katie Taylor, maiden name Perry, is suing the superstar for allegedly infringing her trade mark KATIE PERRY from at least 2013.  

Taylor has alleged in court that she has used the trade mark for the sale and design of clothes since November 2006. Taylor registered the trade mark in Australia in 2008. 

Singer Katy Perry, (her real name being Katherine Hudson), adopted the stage name in 2004 as a combination of her first name and her mother’s maiden name.  

Early days

Perry initially opposed the trade mark registration in 2009, filed cease and desist letters against Taylor and applied for a hearing with IP Australia where she intended to argue against the registration. Perry withdrew her opposition 2 hours before the hearing was scheduled.

The fashion designer launched litigation proceedings in October 2019

Taylor commenced legal proceedings against the singer for alleged trade mark infringement in Australia in October 2019. Taylor claims the singer’s brand KATY PERRY is substantially identical or deceptively similar to her trade mark, KATIE PERRY, and that Perry has been using the trade mark in Australia unlawfully since 2013 despite knowledge of her existing intellectual property rights.  

Perry’s team has admitted that the marks are deceptively similar, however deny any infringement, claiming the mark was used in good faith which is a Defence under the Trade Marks Act. Perry has since filed a cross-claim, alleging that consumers may be confused into believing the singer is associated with Taylor’s brand, and that the trade mark’s registration should be cancelled as it amounts to misleading and deceptive conduct and unlawful passing off.  

Kylie Minogue vs. Kylie Jenner Trade Mark Battle

This is not the first time popstars have gone to court over trade mark rights to a name. In 2016, Australian singer Kylie Minogue famously brought action against American supermodel Kylie Jenner over alleged infringement of her trade mark KYLIE. Both parties were intent on using the trade mark in relation to their respective cosmetic lines. Minogue’s team famously argued that Minogue is an internationally renowned artist who has been performing under the name KYLIE since before Jenner was born, whereas Jenner is “a secondary reality television personality.” The two ended up reaching an out of court settlement and although the exact details are unclear due to confidentiality, the pervading sentiment is that the settlement was more beneficial to Minogue.  

The hearing over the trade mark KATIE PERRY meanwhile continues this week. More to come.   

Progressive Legal can assist you with registering Trade Marks, ensuring no one is infringing on your trade marks, and taking the necessary steps to try and stop the infringing conduct. Contact us here for more information or call 1800 820 083.  

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