High Court goes cold on Katy Perry in trade mark battle
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The news: The High Court has ruled in favour of Australian designer Katie Perry in her trade mark battle with the global music star Katy Perry. The court overturned a Full Federal Court decision which said the designer’s trade mark should not have been registered in 2009 over the singer’s objections because of the reputation of the singer at the time.
The 3-2 verdict on Wednesday restored the decision of Justice Brigitte Markovic at trial, who found that the use of the designer’s mark in respect of class 25 clothing “would not be likely to deceive or cause confusion because of the reputation that the singer’s mark had acquired in Australia before the priority date”.
The context: The case looked at when “acting with knowledge” of another brand or registration becomes unlawful and the impact of global brands. The designer — she sued under her married name Katy Taylor — said she didn’t know about Perry when she first applied for the trade mark in 2007 but was aware of the singer by the time of registration after she had a run of hits including “Hot N Cold”.
When the singer registered her own trade mark in 2011, it was in class 9 (recording disks) and class 41 (entertainment). When the designer sued the singer for trade mark infringement on clothes in 2019 and applied for rectification, the singer countersued. The designer won at trial, but lost on appeal. Lawyers said that if the singer had won, it would have led to an “aggressive clean-up” of the trade marks register, in which local marks might have been removed because of the potential for confusion with global brands or personalities.
What they said: The majority was comprised of Justice Jayne Jagot, the court’s expert on trade marks, Justice Simon Steward and Justice Jacqueline Gleeson. Acting Chief Justice Michelle Gordon and Justice Robert Beech-Jones dissented.
Jagot said Markovic had “made no material error”.
“Once it is accepted that at 20 December 2019 Katy Perry was a pop star and celebrity whose reputation has transcended her pop singer status, it is not possible to discern any error in the primary judge’s analysis or conclusion that the Katy Perry parties in the cross-claim ‘[had] not made out’ the ground for cancellation of the ‘Katie Perry’ trade mark under section 88(2)(c) of the Trade Marks Act."
In a joint judgment, the dissenters referred to the commonly accepted practice of pop stars selling merchandise including clothing.
“As at the date of the respondents’ application for rectification, the use of the Designer’s Mark was even more likely to deceive or cause confusion for the same reasons and also because of the greater international fame of Ms Hudson [Katy Perry] by that time, with associated merchandising including clothing.”
The source: HIgh Court of Australia
