Hot n Cold: The High Court finally determines local designer’s ownership of “Katie Perry” trade mark in respect of clothing

The High Court of Australia has delivered its decision in Taylor v Killer Queen LLC [2026] HCA 5, resolving a long-running dispute between Australian fashion designer “Katie Perry” and the internationally famous singer “Katy Perry” in favour of the fashion designer.

The dispute concerned competing commercial uses of the names “KATIE PERRY” and “KATY PERRY” in connection with clothing and merchandise. 

Key takeaways 

For businesses managing brands or brand expansion, the following are key takeaways:

1. registering a trade mark in Australia remains a crucial step to protect against infringement and/or claims made by third parties. The effect of this is that delay in filing, maintaining and expanding (as appropriate) registration can weaken brand protection;
2. the Court held that Katy Perry’s sales of clothing with knowledge of an existing registered trade mark constituted infringement, and did not support her argument that there was confusion due to her reputation as a singer;
3. a trade mark can only acquire a reputation in Australia in respect of particular goods or services i.e. a reputation in entertainment and music did not automatically extend to clothing even for a globally famous performer; and 
4. personal fame is different from the legal reputation of a trade mark. 

What’s in a name? The factual background

Katie Jane Taylor (born Katie Jane Perry) is an Australian fashion designer. Ms Taylor launched a clothing label under the name “KATIE PERRY” in 2007.

Katy Perry (born Katheryn Elizabeth Hudson) is a global pop singer. In 2002, Ms Perry adopted the stage name “KATY PERRY” for the purposes of her professional music career and associated companies, Kitty Purry Inc and Killer Queen. 

The impugned conduct

On 29 September 2008, the designer registered the trade mark “KATIE PERRY” in Australia in respect of goods within class 25 for ‘clothing, footwear, headgear’ (the Designer’s Mark).

In October of 2008, the singer began to sell branded “Katy Perry” merchandise on her website. However, as at the priority date of the Designer’s Mark, the singer had not yet sold branded merchandise in Australia. 

On 21 July 2009, the singer registered the trade mark “KATY PERRY” in Australia in respect of classes 9 and 41 (the Singer’s Mark). 

The proceedings

Following failed attempts between the parties to negotiate a co-existence agreement, the designer commenced proceedings in late 2019 in the Federal Court of Australia.  The action was filed against the singer and her associated companies, alleging that the singer’s sales and promotion of “KATY PERRY” branded clothing and merchandise in Australia infringed the Designer’s Mark pursuant to section 120 of the TM Act on the basis the Singer’s Mark was “substantially identical with, or deceptively similar to” the Designer’s Mark. 

In response, the singer filed a cross claim seeking rectification of the register by cancelling the Designer’s Mark pursuant to section 88(1)(a) of the TM Act on the basis that the registration of the Designer’s Mark could have been opposed by the singer because the Singer’s Mark had acquired a reputation in Australia in relation to clothing before the priority date of the Designer’s Mark. The singer alleged that, as a result, the use of the Designer’s Mark “would be likely to deceive or cause confusion” by causing consumers to wonder whether there was an affiliation between the designer’s clothing and the singer (sections 88(2)(a) and (c)).

Importantly, however, even if the singer succeeded on her application to cancel the Designer’s Mark, the Court has discretion under section 89(1) of the TM Act to decide whether to grant the application for rectification if the designer satisfied the Court that the ground(s) relied on by the singer did not arise through any act or fault of the designer.

In exercising its discretion, the Court was required to take into account the following matters:

1. the extent to which the public interest will be affected if registration of the trade mark is not cancelled;
2. whether any circumstances that give rise to the application have ceased to exist;
3. the extent to which the trade mark distinguished the relevant goods and/or services before the circumstances giving rise to the application arose;
4. whether there is any order or other remedy, other than an order for rectification, that would be adequate in the circumstances; and / or 
5. any other matter that the Court considers relevant.

Decisions

First instance – Federal Court of Australia

Taylor v Killer Queen, LLC (No 5) [2023] GCA 364

At first instance, the Federal Court of Australia (Markovic J) found in favour of the designer, holding that by the registration date of the Designer’s Mark (29 September 2008), the Singer’s Mark had acquired a reputation in Australia in relation to music and entertainment, not clothing.

In reaching this conclusion, the primary judge relied upon:

1. the actual use of the Singer’s Mark in Australia; and
2. the distinction between the reputation of the name “Katy Perry” as a trade mark and any separate reputation of the singer.

The Court rejected the singer’s cross-claim for rectification of the Register by cancelling the Designer’s Mark.

The singer appealed the decision.

Appeal – Full Court of the Federal Court of Australia

Killer Queen, LLC v Taylor [2024] FCAFC 149

On appeal, the Full Court of the Federal Court of Australia (Yates, Burley and Rofe JJ) overturned the primary judge’s findings in relation to sections 88(2)(a) and (c) of the TM Act, concluding that the singer had established both grounds for rectification (and cancellation of the Designer’s Mark). 

The Full Court stated that the primary judge should have found that:

1. the Singer’s Mark had acquired a reputation in Australia before the priority date of the Designer’s Mark so that the registration of the Designer’s Mark could have been opposed under section 60 of the TM Act;
2. assessing whether the Singer’s Mark had acquired a reputation required consideration of the common practice of pop stars selling merchandise, including clothing, at concerts, as well as the singer’s personal reputation as “Katy Perry”;
3. because of the reputation of the Singer’s Mark, the use of the Designer’s Mark on clothes would be likely to deceive or cause confusion; and
4. consumers were likely to be deceived or confused by use of the Designer’s Mark as at the date that the crossclaim was commenced (20 December 2019).

The designer appealed the decision to the High Court of Australia.

Decision on appeal – High Court of Australia

By a 3-2 majority, the High Court held in favour of the designer by reason that before the priority date of the Designer’s Mark (29 September 2008):

1. the reputation of the Singer’s Mark in Australia was solely in respect of “entertainment” and “recording discs”; and
2. not a single item of “Katy Perry” branded clothing had been sold in Australia,

meaning there was no real and tangible danger of confusion on the part of the ordinary person by use of the Designer’s Mark in a normal and fair way (as required by the concept of notional use).

The High Court held that the singer had not established any ground for cancellation of the Designer’s Mark and ordered the mark to be restored.

In reaching this conclusion, the Court held that:

1. a trade mark can acquire a reputation in Australia only in respect of particular goods or services. However, this does not mean that a trade mark has (or can have) acquired a reputation in Australia in respect of other goods or services;
2. if a trade mark has acquired a reputation in Australia in respect of particular goods or services, it is possible that the use of a mark in respect of other goods or services would be likely to deceive or cause confusion. However, this is a question of fact to be determined on a case-by-case basis; and
3. when assessing rectification of a trade mark, the ‘use’ of a trade mark is assessed by reference to the notional use of the mark, being any normal and fair use across the ambit of the registration of the trade mark, rather than any actual use of that mark to date.

This article was written by , Sophia Smythe Solicitor Disputes