By Despina Lyons, Senior Associate & Trade Mark Attorney

 2025 has been a monumental year for Katy Perry. Not only has she reached the heights of space, Katy Perry is now going all the way to the highest court in Australia to settle a trade mark dispute. It’s not every day a trade mark case reaches the High Court of Australia, and this case will no doubt set some interesting precedents which will be relevant to brands and agencies. We will report again once the High Court has handed down its decision. In the meantime, this article will provide background information about the dispute to date and how this matter has reached the High Court.

Where did it all begin?

Katy Perry was born Katheryn Elizabeth Hudson (“Ms Hudson”) and adopted the stage name “Katy Perry” in about 2003. Her music career took off in 2008 when she released her hit single “I Kissed a Girl” and she found success in a number of markets around the world, including Australia. By 2009, Ms Hudson was booked on a massive world tour, which would bring her concerts to Australia for the first time.

Meanwhile, the Australian designer, born Katie Perry, who goes by her married name of Katie Jane Taylor (“Ms Taylor”), was launching a range of clothing under the brand “Katie Perry”. Ms Taylor registered Australian trade mark number 1264761 for the trade mark “Katie Perry” in class 25 for clothing in 2008.

Ms Hudson had been selling merchandise, including clothing featuring the trade mark “KATY PERRY” at her concerts in many countries worldwide for a number of years. Ms Hudson, through the entity Killer Queen, LLC later applied to register a trade mark in Australia for “KATY PERRY” in a number of classes, including class 25 for clothing. Due to their clear similarity, Ms Taylor’s prior registration for “Katie Perry” was raised as a barrier to the acceptance and registration of Killer Queen, LLC’s class 25 application for “KATY PERRY”. Ms Hudson roared and opposed the registration of Ms Taylor’s trade mark application. However, this was dropped and eventually Ms Hudson reached out to Ms Taylor to propose a co-existence agreement in Australia. Ms Taylor rejected this proposal and class 25 was removed from Killer Queen, LLC’s trade mark application. Despite this conflict and not achieving registered rights in class 25 for clothing, Ms Hudson and her associated entities continued to sell merchandise in Australia, including clothing, under the unregistered (infringing) trade mark.

Federal Court Decision

Eventually, in 2019, Ms Taylor sued Ms Hudson and associated entities at the Federal Court for trade mark infringement regarding her use of the “KATY PERRY” trade mark in Australia in respect of clothing, citing Ms Taylor’s longstanding substantially identical registered trade mark. The reason for the decade-long delay in initiating proceedings was that Ms Taylor is self-funded and was aware that court proceedings can be prohibitively expensive, typically involving hundreds of thousands of dollars in legal fees. The prohibitive costs of court action is a key reason why our firm emphasizes the importance of trade mark watching services, to be aware of potential issues before they arise. i.e. It is much more cost effective to deal with conflicting marks during the application process before they are registered.

In 2018, Ms Taylor claims to have first heard about the concept of litigation funding. Once she had this information, she was determined to take action against Ms Hudson for trade mark infringement. Ms Hudson counter-claimed that Ms Taylor’s registration should be cancelled and that the application should never have been registered in view of Katy Perry’s reputation in Australia and the likelihood for confusion and deception. In this decision, Justice Markovic held in favour of Ms Taylor. The Court held that Ms Hudson and associated entities had infringed Ms Taylor’s “Katie Perry” registered trade mark in respect of clothing by using the “KATY PERRY” trade mark in Australia by promoting merchandise on social media and by selling merchandise during Ms Hudson’s 2014 tour, at pop-up stores and on a website.

Interestingly, the Court held that once orders for the alleged infringing goods from Australia are accepted on an overseas based website, the website proprietors are considered to have intended to use, and in fact have used, the trade mark in Australia. As part of the decision, the Court also considered whether Ms Hudson, in her personal capacity as a director of her companies was a joint tortfeasor in the infringement actions. The Court followed Australian legal authority in this area and stated in order to be a joint tortfeasor, the director must be acting beyond his or her proper role as a director. Justice Markovic held that this was not the case, Ms Hudson’s involvement was merely some input into the product design of the goods and it was held that Ms Hudson was not a joint tortfeasor, sparing her personal liability.

The Court also made some interesting decisions regarding whether particular goods are goods of the same description. The Court held that clothing and footwear are not goods of the same description. This was significant because previously the Trade Marks Office had considered these goods to be similar. The Court also held that hats, headwear, decorative masks, headgear, novelty jewellery, wristbands, bracelets, necklaces, handbags, purses, bags and backpacks are all not goods of the same description as clothes. It is very useful to have judicial statements regarding the similarity of particular goods and it highlights the importance of clearly delineating your goods of interest and not trying to rely solely on vague descriptions that may cover a range of goods falling within a particular umbrella category and drafting trade mark application specifications properly is vital. Since infringement was held, Ms Hudson and her associated entities tried to rely on the defence under section 122(1)(a) of the Trade Marks Act 1995 (Cth) (“the Act”) which provides that a person does not infringe a registered trade mark when that person uses their own name in good faith. I.e. Ms Hudson and associated entities were using the stage name Katy Perry in good faith. This defence failed. The Court held that only Ms Hudson in her personal capacity could rely on the defence where she was held to be a direct infringer. Her associated entities could not rely on this defence and infringement was held.

Full Federal Court Decision

As we know, this was not the end of this battle. Ms Hudson appealed to the Full Federal Court against Justice Markovic’s decision and was successful. The Full Federal Court found that Ms Hudson and her associated entities were not liable for trade mark infringement because Katy Perry had been using her trade mark in Australia prior to Ms Taylor selling clothing in Australia under the trade mark “Katie Perry” and the singer already had a reputation in the name and trade mark. The Full Federal Court held that because of the singer’s reputation, consumers were likely to be confused by Ms Taylor’s trade mark and accordingly, Ms Taylor’s trade mark registration should be cancelled.

The Full Federal Court also made some interesting statements as part of this decision. The Full Federal Court held that Ms Hudson (if there had been trade mark infringement) should have been liable as a joint tortfeasor in her personal capacity. The Full Federal Court considered that the acts of Ms Hudson were beyond those of a director, since the infringing acts of the company were acts that could only come about by the agency of Ms Hudson, who was its sole director, shareholder, CEO and CFO. Ms Hudson was engaged in more than acting as a director, including approving merchandise and deriving a financial benefit from sales of the merchandise. The Full Federal Court upheld Justice Markovic’s decision regarding clothing not being the same or of the same description as footwear. The Full Federal Court also held that stage names are accepted under the 122(1)(a) defence and the Full Federal Court confirmed that the defence is only available in a personal capacity. The Full Federal Court also made an important decision regarding the defence of honest concurrent use under section 122(1)(fa) of the Act. The Full Federal Court held that the relevant date to assess the application of this defence is the date of the first alleged infringing conduct. This means that to take advantage of this defence, the first infringing conduct must occur before the priority date of the infringed trade mark registration. This element of the decision is somewhat unsettled, and it will be interesting to hear the High Court’s decision on this defence.

Appeal to the High Court

Ms Taylor was very dissatisfied with the Full Federal Court’s decision. She applied for special leave and the High Court has agreed to hear this case. This is not a routine event, and the High Court will only grant special leave where it considers that the matter involves an important question of law that is of public importance. As noted in the introduction, trade mark cases do not always make the High Court, and the precedential value of this decision will be high. Ms Taylor will be arguing, among other matters, that the Full Federal Court made an error and just because Katy Perry had established a reputation in Australia at the time Ms Taylor applied for her trade mark application, does not mean that the Katy Perry trade mark had established a reputation in respect of clothing. The High Court’s view regarding the similarity of goods and the application of the own name and honest concurrent use defences and the circumstances in which a director is a joint tortfeasor will be incredibly valuable in day-to-day practice for our clients. It’s a very interesting time, so we recommend that you watch this space and sign up for our newsletters to stay updated. 

“What does this mean for you?”

The Full Federal Court decision has followed Justice Markovic’s ruling that clothing and footwear are not goods of the same description or similar goods. This means that you cannot rely on a registration in clothing to stop someone from using a similar trade mark in respect of footwear. These decisions highlight the importance of clearly listing all of your goods of interest in your trade mark application, conducting regular trade mark audits and applying for additional trade mark registrations as your business grows to make sure that any gaps are filled.

This case also highlights the fundamental importance of due diligence and undertaking thorough searches, not only searches of the Trade Marks Register, but also common law searches to uncover whether any third parties exist which may have a reputation in respect of the same or similar trade mark. It is much easier and cost effective to pivot away from a trade mark with potential pitfalls and conflicts from the beginning and opt for a clear trade mark.

Contact us

We can assist you with trade mark searches when launching a new brand or business and we can assist you with trade mark audits to ensure that you have protection for all of your goods and services of interest.