The Sydney fashion designer behind the Katie Perry brand has won her epic trademark dispute with American pop star Katy Perry, after a legal battle that lasted almost 17 years.
In a majority decision on Wednesday, Australia’s high court ruled that the designer’s label did not violate trademark laws and was not likely to cause confusion, regardless of the singer’s reputation when it was registered.
Fashion designer Katie Taylor, whose real name was Katie Perry, applied to register it as a trading name in April 2007. She had not heard of the singer at the time, the court heard.
The designer subsequently applied to register the trademark “Katie Perry” for the sale of clothing in September 2008, a few months after the release of Perry’s hit debut single, I Kissed a Girl.
When the singer, whose real name is Katheryn Hudson, performed in Australia for the first time, her team created an online store selling “Katy Perry” branded products around the world in October 2008.
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The epic legal battle began in May 2009, when the singer filed a notice of opposition to the Taylor trademark registration and sent cease and desist letters to the Australian designer.
Despite this, the singer’s manager, Steven Jensen, told Perry at the time that his team “had not attempted to stop (Taylor) from marketing under her name.”
“We … have not tried to stop her from marketing under her name, and we certainly have not sued her for trademark infringement,” Jensen said in an email to Perry in June 2009, according to the high court ruling.
Jensen also attempted to convince Perry to issue a statement, telling the singer that “as is common in Australia, the tabloids have picked this up and turned it into a ‘story’.”
But the singer told Jensen she wanted him to “keep me completely out of it.”
“Stupid bitches. I wouldn’t even have bothered with this (if) mtv hadn’t caught on to this nonsense,” Perry responded in an email, quoted in the ruling.
“Silly bitch! Rawr!”
“Very deliberate”
In July 2009, “Katie Perry” was formally registered on the Australian trademark register, which the designer used on her clothing range and to promote her brand.
The singer’s “Katy Perry” trademark, which did not extend to clothing, was registered in Australia in November 2011.
Nearly eight years later, Taylor sued the singer in federal court, alleging that her trademark had been infringed by the sale of “Katy Perry”-branded clothing in Australia.
Perry requested, through a countersuit, that the designer’s trademark be cancelled, claiming that she already had a fairly large reputation in Australia in 2008 and that Taylor’s label would be “likely to deceive or cause confusion.”
Taylor won the case in the first instance in 2023, when the court ruled that the singer’s label, Kitty Purry, had engaged in trademark infringement during her 2014 Prismatic tour.
However, the designer lost the appeal in 2024, when three appellate judges unanimously overturned the original findings and upheld Perry’s counterclaim, ordering Taylor’s trademark registration to be cancelled.
Taylor then took his case to Australia’s highest court.
On Wednesday, three Supreme Court justices, Jayne Jagot, Simon Steward and Jacqueline Gleeson, sided with Taylor.
The judges rejected Perry’s lawyers’ argument that the singer had already acquired a significant reputation in Australia when Taylor applied for the “Katie Perry” trademark in 2008, saying this did not extend to clothing.
The court ruled that Perry’s brand, Kitty Purry, and its international merchandise distributor, Bravado, had been “assiduous infringers” of Taylor’s trademark.
The judges noted that most of the merchandise Perry had sold in Australia was clothing, even though she had voluntarily registered the trademark “Katy Perry” to exclude clothing, which they described as “very deliberate” conduct.
Following the ruling, a spokesperson for the singer said: “Katy Perry has never sought to close Ms. Taylor’s business or stop selling clothing under the KATIE PERRY brand.”
“Today, by a 3-2 decision, the high court determined that Ms. Taylor’s trademark can remain on the register. The court (also) sent the case back to the full Federal Court to determine the issues raised by Katy Perry, including Ms. Taylor’s 10-year delay in bringing her case against Katy Perry,” the spokesperson said.
Taylor’s attorneys have been contacted for comment.
