High Court hands down landmark trade mark decision in Katie Perry V Katy Perry saga

In a decision likely to shape trade mark law in Australia, the High Court of Australia today ruled in favour of Sydney fashion designer Katie Taylor, overturning a Federal Court order that would have cancelled her registered “Katie Perry” trade mark for clothing.

The case pitted Ms Taylor against global pop star Katy Perry (real name Katheryn Hudson) and her associated companies. The decision carries significant implications for trade mark owners, particularly small businesses, and clarifies the law on when a registered trade mark can be removed from the Register because of the growing fame of a rival mark.

Katie Perry V Katy Perry facts

Ms Taylor, who was born Katie Jane Perry, began a fashion label using the name “Katie Perry” in 2007 and applied to register the word mark “Katie Perry” for clothing (class 25) on 29 September 2008 (Designer’s Mark). Ms Hudson has performed under the stage name “Katy Perry” since 2002 and applied to register the mark “Katy Perry” in Australia in June 2009, securing registration in classes 9 and 41 covering recorded music and entertainment (but not for clothing) (Singer’s Mark).

In 2019, Ms Taylor commenced proceedings in the Federal Court alleging that Ms Hudson’s companies had infringed the Designer’s Mark by selling clothing in Australia branded with the Singer’s Mark. Ms Hudson and her company Killer Queen LLC filed a cross-claim seeking to have Ms Taylor’s trade mark registration for the Designer’s Mark cancelled and removed from the Register.

The trial judge (Markovic J) ruled largely in Ms Taylor’s favour, finding that one of Ms Hudson’s companies had infringed and rejected the cross-claim for cancellation. However, on appeal, the Full Court of the Federal Court overturned these findings, ordering the cancellation of the Designer’s Mark. Ms Taylor then appealed to the High Court.

Key legal issues under the Trade Marks Act

The High Court considered three main issues under the Trade Marks Act 1995 (Cth):

1. Whether the Designer’s Mark should be cancelled under section 88(2)(a) (read with section 60) on the basis that, before Ms Taylor’s priority date of 29 September 2008, the Singer’s Mark had acquired such a reputation in Australia that use of the Designer’s Mark on clothing by Ms Taylor would be likely to deceive or cause confusion.
2. Whether Ms Taylor’s trade mark registration for the Designer’s Mark should be cancelled under section 88(2)(c) on the basis that, as at 20 December 2019 (when the cross-claim was filed and more than 10 years after registration of the Designer’s Mark), the use of the Designer’s Mark was likely to deceive or cause confusion because of the circumstances then prevailing – including Ms Hudson’s increased fame.
3. Whether, even if a ground for cancellation under 1 or 2 above were made out, the court’s discretion under section 89 not to grant cancellation should apply — a discretion that is available where the ground for removal did not arise through any “act or fault” of the registered owner (i.e. Ms Taylor).

Why the Court allowed Katie Perry’s appeal

By a majority of three to two, the High Court allowed Ms Taylor’s appeal and set aside the Full Court’s orders to cancel the Designer’s Mark.

The majority (Jagot J, with whom Steward and Gleeson JJ substantially agreed) held that the Full Court had made several errors and that the trial judge’s original findings should not have been disturbed. Key conclusions included:

1. A trade mark can only acquire a reputation in Australia in respect of particular goods or services – the reputation in the Singer’s Mark in music and entertainment could not simply be extended to clothing on the basis of a “common practice” of pop stars selling merchandise.
2. The Full Court wrongly conflated the personal fame of Katy Perry with the reputation of the Singer’s Mark.
3. The trial judge’s finding that there was no real and tangible danger of consumer confusion – supported by a complete absence of any evidence of actual confusion over more than a decade – was not unreasonable or untenable.
4. The mere fact of applying to register a trade mark cannot, by itself, constitute the “act or fault” that would prevent the section 89 discretion from being enlivened.

Steward J provided additional reasons, emphasising the danger of rewarding what he called “assiduous infringers” being parties whose own persistent, knowing infringement of a registered mark creates the very confusion they then rely on to have that mark cancelled.

His Honour noted that Ms Hudson and her companies had sold “Katy Perry”-branded clothing in Australia for years in full knowledge of the registered Designer’s Mark, and that the law should not permit an infringer to profit from its own wrongdoing.

The minority (Gordon A-CJ and Beech-Jones J) would have dismissed the appeal, finding that the Full Court was correct to conclude that both grounds for cancellation were made out. Their Honours considered that a consumer encountering the Designer’s Mark on clothing would be likely to wonder whether it was associated with the pop star, given the close similarity of the marks, the reputation of the Singer’s Mark, and the well-known practice of popular music stars selling branded merchandise.

They also held that the discretion under section 89 was not enlivened because Ms Taylor’s act of applying for registration occurred with the full knowledge of Ms Hudson, the reputation of the Singer’s Mark and the common merchandising practice of pop stars which substantially contributed to the grounds for cancellation. The matter has been remitted to the Full Court of the Federal Court for determination of remaining grounds of appeal and costs.

Potential implications for trade mark owners

This decision is significant for several reasons:

1. Protection for small business owners. The outcome affirms that a validly registered trade mark cannot be removed simply because another party has become more famous after the date of registration.
2. The “assiduous infringer”. The High Court has reinforced that trade mark law should not reward parties who knowingly and persistently infringe another’s registered trade mark and then seek to use the resulting market confusion as a basis for cancelling that mark.
3. Reputation must be mark-specific. The decision clarifies that the reputation relevant to a challenge under section 60 of the Trade Marks Act is the reputation of the trade mark in respect of particular goods or services — not the broader personal celebrity of the mark’s owner.
4. Celebrity merchandising. The ruling may have implications for the growing practice of celebrities registering and enforcing trade marks across a broad range of product categories. A general “common practice” of celebrities selling branded goods, is unlikely by itself, to extend the reputation of their mark into those product categories.

How we can help

The team at Spruson & Ferguson Lawyers regularly advise brand owners on trade mark enforcement and dispute strategy, including when and how interlocutory injunctions may be available.  

We work closely with clients to assess risk, prepare evidence, and develop practical litigation strategies that reflect both legal and commercial priorities. 

Collaborating closely with our trade marks attorneys, we ensure that client’s registration strategy, enforcement options and court proceedings are aligned – placing brand owners in the strongest possible position if court intervention becomes necessary. 

Early advice can be critical in reviewing your options around infringement issues, a brand launch, or enforcement action.

Reach out to the authors here or your Spruson & Ferguson contact for a confidential discussion.

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