US pop singer and American Idol judge, Katy Perry, has lost a 15-year trade mark battle against Australian fashion designer Katie Taylor (nee Perry) over their shared name.
This victory for the smaller Australian enterprise showcases the strength of a trade mark registration to enforce your rights and protect the originality of your brand.
The dispute
The battle began in 2009 when pop star Katy Perry attempted, unsuccessfully, to stop the trade mark registration of the words ‘Katie Perry’ in relation to Taylor’s clothing line, as Perry’s team deemed it to be ‘misleading and deceptive’.
The battle continued in 2014 when Perry travelled around Australia with her Prismatic World Tour, during which merchandise was sold under her Katy Perry stage name. Small business owner and designer, Katie Taylor, alleged that in selling and promoting this clothing, Perry breached Taylor’s registered trade mark.
In April 2023, the Federal Court Judge, Justice Brigitte Markovic, ruled that there had been a partial infringement of the Australian designer’s trade mark. While Katy Perry was able to rely on the defence of using one’s name in good faith, her company, ‘Kitty Purry’, was ordered to pay damages to Taylor and was served an injunction to restrain them from breaching the trade mark further.
What can we take away?
On her website, Taylor described the outcome as a “victory in the David and Goliath case”. She goes on to say:
This is a win for small business. We matter, Australian laws matter and most importantly in the face of a bully it is important to stand up for yourself.”
No matter the size of your business, registering a trade mark will provide you with exclusive legal rights to use the unique signifiers that set your brand apart from competitors – even those competitors that are larger or more dominant in the market.
Registered trade marks include protection over similar variations of the mark, and provide a security that you do not get from simply using a name for a successful enterprise, registering a business name or claiming a domain name.
Early registration is key. To discuss the protection of your brand, contact us at trademarks@redchip.com.au.
