Katie v Katy: a 'Perry'lous dispute.

• An ongoing legal dispute between clothing designer, Katie Jane Taylor and American singer-songwriter, Katy Perry, continues to make headlines.
• Taylor, owner of the registered trade mark ‘Katie Perry’, claims that Katy Perry’s use of the mark ‘Katy Perry’ for her products is deceptively similar.
• In response to Taylor’s claim, Katy Perry is seeking to invoke the ‘good faith’ defence.

Laying out the fabric of the dispute

Taylor commenced operation of her business ‘Katie Perry’, Taylor’s maiden name, in 2006, selling ‘versatile and sustainable’ clothing. At the time, Taylor registered her business and domain names. Taylor also registered the trade mark ‘Katie Perry’ in Australia to protect her brand in relation to clothing goods.

A year later, though Taylor generally knew of ‘Katy Perry’ and the singer’s reputation, it surprised her when Taylor received cease and desist letters from the singer, Katy Perry on the basis of trade mark infringement. In order to resolve the matter amicably, Taylor and the singer, Katy Perry discussed a co-existence agreement. However, the terms could not be settled upon.

Over a decade later, Taylor is now seeking legal action against the singer, Katy Perry, claiming she infringed the ‘Katie Perry’ trade mark. Katie Perry has also launched a cross-claim to have Taylor’s trade mark cancelled.

Threading the needle of a ‘good faith’ defence

The case between Taylor and the singer, Katy Perry raises important considerations where a person is seeking to use their own name for their brand or business – particularly where that name is already registered as a trade mark. Some examples of these considerations are as follows:

• Are the trade marks ‘substantially identical to, or deceptively similar?
• If so, is the good faith defence applicable on the basis of using one’s own name?

Section 120 of the Trade Marks Act 1995 (Cth) (Act) states:

‘a person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered’.

In the context of section 122 of the Act, the good faith defence is available to a party against trade mark infringement where they, in good faith:

• use a name, place of business or predecessor;
• use a sign to indicate a characteristic of goods or services; or
• use the trade mark to indicate the intended purpose of the goods or services they are providing.

This issue was explored in the landmark case Australian Postal Corporations v Digital Post Australia [2013] FCAFC 153, where the Court held that the good faith defence would apply where:

• there was no dishonesty;
• the usage was not for any ulterior motive, one such motive being to wrongly divert business; and
• there are was an honest belief that no confusion would arise between marks.

Prior knowledge of the registration of a trade mark also indicates lack of good faith.

As it applies to the case of Taylor and the singer, Katy Perry, it may be argued that the singer, Katy Perry knew of Taylor’s registered trade mark, as evidenced by the cease and desist letters sent to Taylor in 2009. The nature of these letters could also demonstrate an understanding that confusion could arise, potentially further weakening the singer, Katy Perry’s position.

Alternatively, the singer, Katy Perry argued that the name was not used to dishonestly divert business, on the basis that she had already developed her own ‘very substantial reputation, including in Australia’.

It remains to be seen whether the singer, Katy Perry claim of good faith will be successful. What can be said, is that this case will be critical for those looking to register their own names as trade marks in Australia.