What happened?
International superstar, Katy Perry was being sued by Australian designer Katie Taylor for allegedly stealing the trademark for her apparel line Katie Perry in Australia.
What Constitutes as Trade mark Infringement?
The unlawful use of a trademark that is identical to or confusingly similar to a trademark that is registered on the Trade Mark Registry for the same or similar goods and services.
Background
In Australia, the trade mark “Katie Perry” for clothes (class 25) was first registered in September 2008 by Katie Taylor (also known as Katie Perry as her maiden name). Since November 2006, she has been marketing clothing under the “Katie Perry” brand name.
Katy Perry (a stage name), whose real name is Kathryn Elizabeth Hudson, attempted to register “Katy Perry” as a trade mark for clothing in Australia but was unsuccessful because IP Australia deemed it to be too similar to the trade mark of an Australian designer for the same goods.
In 2009, Hudson sent Taylor cease and desist letters requesting that she stop using her trademark. Hudson asserts that she began using the brand “Katy Perry” for her professional music career in 2004, while Taylor counters that she started her company long before she was aware of the singer’s existence. They tried to draw a coexistence agreement, but they could not agree on the terms.
Taylor filed a lawsuit for trademark infringement against Hudson in December 2019 on the grounds that Hudson had infringed on Taylor’s “Katie Perry” trade mark without authorisation. Although Hudson was aware of Taylor’s existing trademark rights, she has been marketing clothing apparel under the name “Katy Perry” in Australia since 2013.
Hudson responded by asserting her good faith use of her own name as a defence under the Trade Marks Act. Australian Postal Corporation v. Digital Post Australia [2013] FCAFC 153 states that the defence is applicable if the use was:
- honest and without a hidden agenda;
- not intended to mislead or exploit the goodwill established by another trade mark.
Since Hudson was aware of Taylor’s trademark from her cease and letters, this indicated that she did not act in good faith as she had previous knowledge of the registration of the mark “Katie Perry”.
In addition to her good faith defence, Hudson also attempted to cross-claim Taylor, requesting that Taylor’s mark be cancelled, on the grounds that Katy Perry had already built a reputation in Australia before the Australian designer’s trade mark had been registered and that consumers may be misled into thinking the singer is connected to Taylor’s clothing line.
The parties will appear in court once more in the future.
Insight of the Case
It can be simple for a business owner, no matter how big or little, to overlook the significance of your brand for the products and/or services you offer.
In the course of conducting business, a trade mark owner has the exclusive right to use the registered trade mark. Under the Trade Marks Act, the trade mark owner has the right to sue anyone who infringes on the use or the use of their trade mark without authorisation.
Interesting fact: When Taylor first received the cease and desist letters from the international superstar, she initially feared she would lose her own brand. However, as she is the owner of the “Katie Perry” trade mark registration, she has exclusive right of her brand and is able to continue using it for her designer goods in Australia. Additionally, the trade mark registration affords protection against it being used without express authorisation from the owner.
Taylor was the first to register the name “Katie Perry” and is the only one who can use it for Class 25 clothing goods. Although Australia is not a “first to file” country, Hudson has found it challenging to cancel the mark based on non-use due to Taylor’s consistent use of the brand. Despite Hudson’s assertions that she first used the mark in 2004, she needed to provide proof that her trademark “Katy Perry” had been used on clothing apparels in Australia before Taylor did so in 2006.
If you possess a brand and use it for business in Australia, we urge you to apply for a trade mark as soon as possible to safeguard your only right to use it.
Avoid leaving it too late! Reach out to Bookmark IP- we love to assist brand owners to protect their brand.
