This is a tale of two names, two businesses, and one register.

In April 2007, Katie Taylor registered the business name “Katie Perry”. By August 2008, she was selling clothing under that name from Paddington Markets. On 29 September 2008, she applied for the KATIE PERRY trade mark in class 25 for clothing.

That date would decide everything.

Across the Pacific, Katheryn Hudson had already become Katy Perry. By 2008, she was a global pop star, with I Kissed a Girl topping the Australian charts.

But she had not sold clothing in Australia under the KATY PERRY name.

In May 2009, the singer’s team sent a cease-and-desist, filed an opposition, and later proposed a co-existence deal. Taylor said no, and by July 2009, her mark was registered.

A month later, Katy Perry toured Australia. Merchandise bearing the KATY PERRY name was sold at concerts for the first time.

Over the next decade, KATY PERRY-branded clothing flowed through tours, pop-ups and major retailers. Meanwhile, Taylor continued building a small, self-funded fashion label under her registered name.

Then came the turning point.

It wasn't until 2019 that Taylor commenced Federal Court proceedings, funded through litigation funding after years of being unable to afford the fight. The singer cross-claimed for cancellation of the designer's trademark.

Taylor won at first instance in 2023, but the Full Federal Court reversed that decision in 2024, finding the singer's prior reputation meant the designer's mark was liable to be cancelled.

The designer took the case to Australia's highest court.

By a 3–2 majority, the High Court restored Taylor’s registration.

The majority held that the singer's reputation in Australia as at the priority date (29 September 2008) was confined to entertainment and music. Despite the common practice of pop stars selling merchandise, that reputation did not automatically extend to clothing — no Katy Perry-branded clothing had been sold in Australia before that date.

Justice Jagot found that ten years of co-existence in the market with no evidence of actual confusion was sufficient to support an inference that deception or confusion was not likely. She described the Katie Perry trademark as one that would be "seen rather than heard", reducing the significance of the marks' aural similarity.

Justice Steward went further, characterising the singer's companies as "assiduous infringers". His Honour held that an infringer cannot take advantage of confusion caused by their own wrongdoing to seek cancellation of the mark they were infringing.

Justice Gleeson agreed, finding that an ordinary consumer would have expected clothing associated with the singer to bear some additional connection to her tour details, album names, or a concert context, rather than the bare name alone.

The two dissenting justices, Gordon ACJ and Beech-Jones J, agreed on the legal principles but reached the opposite conclusion on the facts, finding the likelihood of confusion was real at both the 2008 priority date and the 2019 cancellation application date.

Earlier, Katy Perry’s team engaged trade mark specialists Fisher Adams Kelly and Holding Redlich, which proposed a co-existence arrangement in 2009.

The High Court has remitted the matter back to the Full Federal Court to determine outstanding issues, including what relief is available given the designer's 10-year delay in commencing proceedings after first becoming aware of the infringement.

The singer's representatives said the court had sent the case back to address "issues raised by Katy Perry, including Ms Taylor's 10-year delay in bringing her case."

Costs were awarded in the designer's favour, with the quantum to be determined.

Source: Judgment