- within Intellectual Property topic(s)
- in United States
- with readers working within the Construction & Engineering industries
Who has the right to a surname in business? Why even "Katy Perry" had to give way
A surname may be an economic good, function as a company or trademark. Let us check what the law tells us about the legal status of a surname as a personal good, belonging to a person and, at the same time, as an element of the market, acting as a company or trademark.
The use of the surname as a trademark has been immensely popular in business transactions for years. In the past, this type of designation can be found in the fashion industry (fashion house brands often bear the surnames of designers). Today, this is no exception in other industries.
Therefore, it is worth knowing that registering a surname as a trademark raises significant legal challenges. The key challenge is the relatively high probability of the existence of identical or similar determinations in the market.
Katy Perry v. Katie Perry
On March 11, 2026, the long-standing dispute between the Australian fashion designer Katie Perry (or Katie Taylor, after she changed her surname) and the American pop singer Katy Perry ended. The Australian High Court of Australia ruled in favor of the designer, finding that the singer's use of the "Katy Perry" designation on clothing sold in Australia misled audiences and violated the registered Taylor "Katie Perry" trademark.
In 2007, Katie Perry founded a fashion brand under the name "Katie Perry" and started selling clothes in local stores, on the website and on social media. In 2008, she applied for the registration of the word trademark "Katie Perry". It was then that the dispute between the designer and the singer began. Katy Perry called on the designer to stop using the designation. In the end, the case was not resolved amicably, and the "Katie Perry" trademark was registered in Australia.
In 2019, the designer sued Katy Perry before the Federal Court of Australia, claiming that the sale of clothes and gadgets marked "Katy Perry" during the singer's Australian tour in 2014 violated the protection law from the registration of her trademark. In the first instance, the court recognized the designer's action, but the following year, in the appeal, the court set aside the original judgment and ordered the cancellation of the designer's trademark.
In 2023, the designer sued the singer for trademark infringement and won the case in the Federal Court of Australia, obtaining a favorable judgment regarding the sale of clothing, including jackets, sweatshirts, and T-shirts. However, in an appeal in 2024, the court invalidated the designer's trademark, finding that the singer had used her surname as a trademark before and had acted in good faith.
In the end, the Australian Supreme Court in Sydney agreed with the designer's arguments. In the justification, the judges indicated, among others, that the average Australian consumer "will not think that Katie Perry's products are related to the American singer" and that the mere use of the surname Perry as a trademark is not misleading. At the same time, it was considered that the sale of clothes marked "Katy Perry" was an act in bad faith, directly violating the designer's rights.
Legal instruments of surname protection
The issue of using the surname as a designation also aroused the interest of the Polish public in connection with the widely commented speech of President Karol Nawrocki in clothing with the designation "NowRocky", which contributed to the discussion on the limits of using the surname for commercial purposes.
The protection of personal rights, such as surname, nickname or image, results from Article 23 of the Civil Code. Infringement of these goods under industrial property law may constitute an obstacle to the registration of a trademark. Article 156 of the Labour Code, in turn, treats the use of the surnames in trade by other persons as one of the limitations of the protection right for a trademark.
In practice, the trademark in the form of a surname is also subject to the same rigors as any other designation, which means the need to meet the prerequisites of distinctiveness and not to collide with earlier rights. In practice, the following is of particular importance:
- the possibility of perceiving the surname by the recipients as an indication of the origin of goods or services from a single, specific entrepreneur,
- its nature (e.g., surname may be more or less common),
- possible reputation that may strengthen its ability to distinguish itself on the market from the marks of other entrepreneurs.
At the same time, it should be emphasized that registering a surname as a trademark leads to its "detachment" from a purely personal nature and inclusion in the sphere of property rights. From that moment on, it is subject to the rules applicable to trademark law, primarily, the right to use a given surname as a trademark in a specific form is vested in the person who first effectively applied for it.
At the same time, examples from the case-law show that an ordinary, common surname, used independently by various entities, does not exclude the registration of a trademark (e.g., RYŁKO trademarks for clothing and footwear). On the other hand, the use of the surname or nickname of a person known for the purpose of evoking associations with this person may constitute a violation of personal rights and be the basis for refusal of registration (e.g., DODA ENERGY DRINK).
Conclusions
The ruling of the Australian Supreme Court and the analysis of Polish surname protection instruments based on the industrial property law leads to several important conclusions of a general nature. First, the surname, although it constitutes a personal good, does not guarantee an unlimited right to use it in business activity. Secondly, the principle of priority is of key importance, i.e., the earlier obtaining of protection or the commencement of the use of the sign may determine the outcome of the dispute, regardless of the recognizability of the person concerned. Thirdly, the decisive criterion is the risk of misleading the recipients and the compliance of the operation with fair market practices. Fourthly, the use of one's own surname in trade may not lead to a violation of the distinctive or advertising function of the trademark, or to unfair use of another's well-established market position and good associations with a given surname developed by another entity.
Consequently, it should be stated that the surname in the course of trade retains the nature of a good resulting from the confirmation of the identity of a specific person, but subject to the restrictions of civil law and industrial property law at the same time. The final scope of this protection is determined by the need to balance the interests of the entity and the interests of other participants in business transactions.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
