By Despina Lyons, Senior Associate & Trade Mark Attorney

Wednesday, 24 June 2026

The High Court recently delivered its decision in the ongoing battle between the pop star Katy Perry and the Australian clothing designer Katie Taylor who adopted the trade mark “KATIE PERRY”. For further background about this case and how it made it all the way to the High Court, you may want to revisit our previous article here.

Where the matter left off before it made it to the High Court, was that the Full Federal Court decided that because of the pop star Katy Perry’s reputation, consumers were likely to be misled by Ms Taylor’s “KATIE PERRY” trade mark and accordingly, Ms Taylor’s “KATIE PERRY” registered trade mark should be cancelled. Ms Taylor appealed this decision to the High Court and in the following article, we will discuss the decision of the High Court and its implications.

Key Issues

As noted above, the High Court decision focused on the decision to cancel Ms Taylor’s “KATIE PERRY” registered trade mark. This decision was made under section 88 of the Trade Marks Act 1995 (Cth) (“the Act”).

The following three main issues were to be determined:

1. whether Ms Taylor’s registration could have been opposed under section 60 of the Act on the basis that the “KATY PERRY” mark had acquired a reputation in Australia before the priority date (29 September 2008) of Ms Taylor’s trade mark registration and, as a result of that reputation, use of the “KATIE PERRY” trade mark by Ms Taylor in relation to clothes would have been likely to deceive or cause confusion (section 88(2)(a) of the Act);
2. whether at the time the application for rectification was filed (20 December 2019), the use of the “KATIE PERRY” trade mark by Ms Taylor was likely to deceive or cause confusion (section 88(2)(c) of the Act); and
3. if either ground was established, whether the discretion not to cancel a trade mark registration under section 89 of the Act was triggered.

The High Court allowed Ms Taylor’s appeal by a 3:2 majority and set aside the Full Federal Court’s decision to cancel Ms Taylor’s “KATIE PERRY” registered trade mark. Ms Taylor’s appeal was successful, and her registered “KATIE PERRY” trade mark was restored. We will discuss the High Court’s decision in respect of each of the issues raised above, and what it means for trade mark owners moving forward.

1. Reputation and likelihood of confusion at the priority date – application of section 60 and section 88(2)(a) of the Act

All of the judges agreed that at the priority date, i.e. 29 September 2008 that Katy Perry had established a reputation in Australia in respect of entertainment and music services. However, the judges differed in their opinions regarding whether that reputation extended to clothing, the goods at the centre of this dispute.

The majority, in separate judgments, held that the Full Court erred in finding that the practice of pop stars selling merchandise including clothing at concerts could extend the reputation of the “KATY PERRY” mark to clothing. The decision emphasised that at the priority date no “KATY PERRY” branded clothing had been sold in Australia and the general practice of pop stars selling merchandise at shows could not give the trade mark a reputation in goods it had never been used on in Australia.

Regarding whether use of the “KATIE PERRY” trade mark by Ms Taylor would be likely to deceive or cause confusion due to the “KATY PERRY” trade mark’s reputation, the majority of the High Court held that it would not. In separate judgements, the justices considered that ordinary people aware of Katy Perry’s reputation as a pop star would not mistakenly consider any connection with clothing bearing the “KATIE PERRY” trade mark.

2. Reputation and likelihood of confusion at the date of the rectification application – application of section 60 and section 88(2)(c) of the Act

The majority held that by 2019, Katy Perry had established a reputation in Australia for clothing goods. However, the majority found that even though Katy Perry had acquired a reputation in Australia for clothing, the second element of section 60, likelihood of confusion was not present. Here, the majority held that the strength of Katy Perry’s fame and reputation was actually a factor against the likelihood of confusion or deception. Due to the strength of Katy Perry’s reputation, ordinary people encountering Ms Taylor’s use of the “KATIE PERRY” trade mark on clothing were likely to consider that there was no connection and therefore, no likelihood of deception or confusion. Noting that the result was a 3:2 majority, it would be safe to assess that this was a line ball decision.

Ultimately, neither ground of cancellation was established. Accordingly, the High Court did not need to consider the discretion not to cancel a trade mark registration in section 89 of the Act. No grounds for cancellation were established, so the “KATIE PERRY” trade mark owned by the Australian Ms Taylor was restored and remains on the Trade Marks Register.

Key Takeaways

The High Court’s decision has clarified the application of section 60 of the Act. Very importantly, the High Court has held that the relevant reputation must be in respect of the particular goods or services in dispute, and should not (and cannot) be taken as being more broad than that. Reputation in respect of adjacent goods or services will not necessarily be enough to establish the section 60 ground of opposition and therefore cancellation of a registered mark. This decision is somewhat old fashioned and ignores the realities of the modern celebrity practice of brand extensions. This is particularly surprising here, where tour merchandise in the form of clothing is a very well-established practice. However, this is the High Court’s position at this time and brand owners will need to work within these restrictions and seek to prove reputation in respect of the goods and services in dispute.

The decision also highlights how valuable registered trade marks are. Trade marks are incredibly difficult to cancel once registered and this decision highlights the value in pursuing registered trade mark rights. The decision also highlights the limitations of seeking to rely on reputation to stop encroachment of third parties into adjacent areas. Businesses should apply for trade mark applications in all relevant classes and should do so early. Additionally, businesses should assess their trade mark portfolios on an ongoing basis and consider filing further applications in respect of additional goods and services when they expand their offerings.

Contact us

If you would like further information about this decision or if you are interested in seeking registered trade mark rights, please contact us. We can also assist you with clearance searches and registrability opinions so that you select a trade mark that is most likely to be registrable and defendable.