An Australian fashion designer, Katie Taylor, who sells clothes under her birth name Katie Perry has won a trade mark battle against pop star Katy Perry. Taylor described the outcome as a victory in a “David and Goliath” case.
The Australian designer established her “KATIE PERRY” business in late 2006 and registered the brand as a trade mark in Australia in 2009. She claimed to have only become aware of the pop singer in July 2008 and was not too keen on her style of music.
The legal battle between the two women over the trade mark began in 2009, when the pop star Katy Perry (whose legal name is Katheryn Hudson) filed a trade mark for “KATY PERRY”, and her representatives addressed a cease and desist letter to the Australian fashion designer. The pop star was attempting to stop Taylor from registering the trade mark KATIE PERRY, as she believed it was “misleading and deceptive.” Attempts to establish a co-existence agreement also failed.
Justice Brigitte Markovic in the Federal Court of Australia ruled that the pop star had infringed the KATIE PERRY trade mark by tweeting and posting on her Facebook. Her social media posts promoted various clothing items and a pop-up store.
The pop singer relied upon the trade mark defence of using one’s name in good faith and was successful. However, the pop singer’s company, Kitty Purry, was found to have infringed the KATIE PERRY trade mark by advertising and selling clothing items during the 2014 Australian tour. The Federal Court ordered an injunction restraining Kitty Purry from continuing to engage in infringing conduct and further paying damages to the Australian fashion designer.
This judgment again emphasizes the importance of protecting your brand and registering a trademark
