What Katy/Katie (Perry) Did: The Trade Mark Saga Continues

Just when you thought it was over, the long-running trade mark dispute between US pop superstar, Katy Perry and Sydney fashion designer, Katie Jane Taylor who designs and sells clothes under the Katie Perry brand, has taken a fascinating turn.

In the latest development, the High Court of Australia granted Taylor’s application for special leave to appeal the last decision .  This development follows years of legal twists and turns and if successful, aims to reverse the decision made by the Full Federal Court in November 2024, which found in favour of the American popstar (but, that was also following an earlier decision where the Federal Court found in favour of the Australian designer).

This long-running trade mark dispute has captured the attention of the legal world as well as the general public and not only because it features a high-profile pop star.  It’s also a David vs Goliath scenario of a small business owner taking on a global megastar and it’s highlighted the complexities of the trade mark environment and the laws that govern it.

Ironically, neither woman used the name Katie or Katy Perry in their early lives. 

A Tale of two Katy/ies

The singer’s given name is Katheryn Elizabeth Hudson and although she used various names in her early singing career, she adopted ‘Katy Perry’ as her stage name in 2003.  The Australian designer was born Katie Jane Perry and now goes by her married name of Taylor.

There are lessons to be learnt from the dispute and it serves as a cautionary tale to businesses, both large and small, in terms of ensuring that the legal protections around their intellectual property assets are as watertight as possible.

The background to the Katy/Katie Perry trade mark dispute

Sydney-based Katie Jane Taylor secured the exclusive rights to the name ‘Katie Perry’ in Australia when she registered it as a trade mark in 2008 – a year after she launched her fashion design and clothing business.  

Meanwhile, Katy Perry had started to make a name for herself in the entertainment industry and her reputation was gaining significant traction.  Her breakthrough single, ‘I Kissed A Girl’ flew to the top of the US charts in 2008 and international tours were planned.

Even though the singer had been selling merchandise under her (US) trade marked name for several years prior to the designer launching her brand and had already achieved international acclaim, she reached out to Taylor in 2009 to propose a co-existence arrangement whereby the two parties would share their respective trade marks.  This offer was rejected by Taylor and Katy Perry continued to sell her branded merchandise in Australia for the next decade.

The Aussie designer then continued with trade mark infringement proceedings against Katy Perry and her associated companies through the courts, particularly in 2019, she took the case to the Federal Court.  

Taylor won this initial case.  Whilst the singer had counter-claimed that Taylor’s registration should be cancelled, Justice Brigitte Markovic found (when the judgement issued in 2023) that the American star didn’t have a reputation in Australia in relation to clothing at the time the designer filed to register her trade mark and she also found that the 13-time grammy nominee had infringed the Australian designer’s trade mark in regards to merchandise sold during her Australian tours. 

In her judgement, she said that it was a tale of two women, two teenage dreams and one name – but as we have seen over the years, it’s much more than that.

The singer appealed against the decision – and won.

In late 2024, the Full Federal Court essentially overturned the 2023 judgement, in part because they found  that Katy Perry (the singer) had already established recognition in Australia at the time the designer registered the ‘Katie Perry’ trade mark and at the time of the cross claim (which, remember is some 10+ years later) and that she was using her name as a trade mark in Australia. 

The Full Court found that because of the singer’s reputation, the use of Taylor’s mark on her clothes would ‘be likely to deceive or cause confusion’ among the public. 

The Court also ordered that the designer’s trade mark be cancelled and she was ordered to pay the costs for the appeal.  

And now in the latest twist to this protracted dispute, Taylor has been granted leave to appeal by the High Court of Australia – the highest court in the land.  The matter was set down for a one day hearing on 6 May 2025.

What does this latest ruling mean?

In terms of trade mark litigation, this is an extremely rare situation.  There aren’t many examples of where the High Court grants appeals such as this, leading to speculation about the reasons behind it.  One suggestion is that the earlier ruling by the Appeals Court may have been made on an incorrect premise and that trade mark principles were incorrectly applied.

What are the implications of this case for Australian trade mark owners?

This protracted battle is really interesting and very complex, including in relation to the time that lapsed between the parties first communicating, and, the matter being brought before the Courts – and the next round will have significant implications in terms of how similar trade mark cases are treated. 

The legalities are far from over, but what the process has done already is highlight the critical importance of doing thorough searches before adopting any brand name or expending any resources in building a business around a brand, and, perhaps being prepared for the costs involved in enforcing or defending your rights.

Another key outcome has been the emphasis that the Court placed on minimising confusion and deception for the public.

Ultimately, the outcome is likely to have a significant impact on the application of key trade mark principles in the future.

A final word on the Katy/Katie Perry legal wrangle

This case emphasises the need for business owners to be cognisant of legal protections for trade marks right from the early stages of designing and establishing a brand.  

It also highlights that you need to tread carefully when launching a brand and do thorough due diligence before registering a trade mark – plus it underscores the need to be specific about the goods you are claiming when you file a trade mark application.

Trade mark law is complex – even for the experts – and it’s helpful for business owners to get advice from an experienced trade marks attorney who is up-to-date with the ever-evolving world of trade marks.  Contact the team at MMW Trademark Services if you’d like a professional, affordable legal expert on your side.