Singer Katy Perry has won a long-running legal fight with an Australian fashion designer after an appeal court ordered the cancellation of the Sydney businesswoman’s “Katie Perry” trademark.
Local loungewear designer Katie Jane Taylor, who sells clothing under her birth name Katie Perry – not Katy Perry – described the decision as “heartbreaking”.
Katy Perry (left) and Australian fashion designer Katie Jane Taylor, who sells clothing under the brand name Katie Perry.Credit: Eddie Jim, Janie Barrett
Taylor had sued the American singer-songwriter for trademark infringement over the performer’s own “Katy Perry” merchandise and had a partial victory last year. The singer and related companies filed an appeal.
In a decision in Sydney on Friday, the Full Court of the Federal Court said the designer’s claim could not succeed because her trademark “was not validly registered” from September 2008, and the register “should be rectified by cancelling its registration”.
The registration was not valid because the trademark was likely to deceive or cause confusion at a time when Perry was already a “nationally and internationally famous pop star” who had “released several singles and an album which had achieved significant exposure in Australian media”.
The court said the “difference in spelling of ‘Katy’ v ‘Katie’ does not take the aurally identical word marks beyond deceptive similarity”.
“Whilst some die-hard fans of [the I Kissed a Girl singer and co-writer] may recognise the incorrect spelling, the ordinary consumer with an imperfect recollection … would be likely to be confused as to the source of the item and wonder whether it was associated with [the performer].”
Taylor’s lawyers submitted that the designer only became aware of Katy Perry in July 2008, by which time she had already incurred significant personal expenses in her brand. She registered the Katie Perry domain name in Australia in May 2007.
Justices David Yates, Stephen Burley and Helen Rofe said that, in July 2009, Perry had “proposed a coexistence agreement with Ms Taylor that would have let both ... continue to use their marks”.
Earlier that year, US lawyers for Perry had sent a “cease and desist” letter to Taylor in a bid to stop the designer’s application for registration of her trademark.
“Ms Taylor rejected that offer of a coexistence agreement, which, as circumstances turned out, would have been an excellent outcome for both parties,” the judgment said.
“[Having] rejected the offer, Ms Taylor then chose to commence infringement proceedings ... In that sense, Ms Taylor has brought this result on herself. Unfortunately, it is no longer possible to return to the time of peaceful coexistence.”
The Full Court granted a limited stay to prevent the trademark cancellation order from taking effect until the outcome of any High Court appeal process. Taylor, who is also facing a hefty costs order, does not have an automatic right of appeal and would need to apply for special leave.
Taylor told The Sydney Morning Herald: “I am devastated with the outcome of the case. I won my case at first instance and to have it overturned on appeal is heartbreaking.
“This case proves a trademark isn’t worth the paper it’s printed on. My fashion label has been a dream of mine since I was 11 years old, and now that dream that I have worked so hard for since 2006 has been taken away.
“I will take some time to digest today’s decision and work out my next steps with my legal team and circle of supporters.”
In a decision in April last year referencing one of the singer’s best-known hits, Justice Brigitte Markovic had said: “This is a tale of two women, two teenage dreams and one name.”
Delivering a partial victory for Taylor, Markovic said Perry had infringed Taylor’s “Katie Perry” trademark in a series of tweets and Facebook posts between 2013 and 2018 when she promoted Katy Perry merchandise available in connection with her Prismatic world tour, Cozy Little Christmas hoodies, T-shirts, sweatpants and scarves, and pop-up stores.
The judge also found Perry’s company, Kitty Purry, was liable along with tour merchandise company Bravado for infringing Taylor’s trademark in advertising and selling Katy Perry clothes during the Prismatic tour’s Australian leg, at Sydney and Melbourne pop-up stores, and on the Bravado website.
But the appeal court found Taylor’s trademark infringement claim could not succeed and set aside a raft of orders made in May last year.
The law firm acting for Perry in Australia declined to comment.
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