This David and Goliath battle demonstrates that Lady Justice’s ideal that justice should be applied without regard to wealth, power or status is indeed alive and well.
This is an intellectual property case of a trade mark duel between Katy Perry and Katie Perry.
KATIE Perry sells clothes under her birth name Katie Perry and owns an Australian registered trade mark 1264761 Katie Perry for “clothes”.
The famous popstar KATY Perry toured Australia in 2014 and 2015 (amongst other times) and sold merchandise clothing which displayed Katy Perry branding.
Background on the case
In 2008 the designer registered her trade mark and the popstar released “I Kissed a Girl”. In 2009 the popstar received a cease-and-desist letter from the designer’s representatives, and the popstar registered her trade mark, being 1306481. Katy Perry for musical recording-type goods and entertainment-type services. Court proceedings ensued for breach of the designer’s trade mark rights.
Where is the case up to now?
The names Katie Perry and Katy Perry, although spelt differently are aurally identical. In Australia, trade mark infringement is the unauthorised use of a registered trade mark. That conduct is identifiable when a sign is used as a trade mark which is substantially identical or deceptively similar to a registered trade mark in relation to goods of the same description as the goods or services of a registered trade mark, or in relation to services that are closely related to the goods or services of a registered trade mark, or in relation to goods that are closely related to the goods and services of a registered trade mark, unless the respondent can make out a relevant defence.
Katy presented an “own name” defence meaning that she was simply using her own name in her branding. She also indicated use of the name Katy Perry had at all times been in good faith because it occurred with an honest belief that no confusion would arise from it.
The Court found that the designer’s trade mark KATIE Perry was infringed on various social media sites and at pop-up stores in Sydney and Melbourne during the Australian leg of Katy’s Prismatic Tour by companies owned and operated by the popstar. The Popstar, through these companies, promoted and sold clothes and merchandise bearing the mark KATY Perry.
A cross claim by the popstar to cancel the designer’s trade mark was dismissed.
What can we learn from this?
The important message is that no matter how famous you are or how large your organisation is, it is essential to ensure you are not using a trade mark or branding which may infringe someone else's trade mark rights. Before you use your branding, check, check and check again.
Equally, if you are a trade mark owner, then don’t be reticent to enforce your intellectual property rights. Indeed, a registered trade mark owner should be vigilant in pursuing its rights promptly, as a delay may be prejudicial.
Lady Justice’s ideal that justice should be applied without regard to wealth, power or status still stands.
This publication has been prepared for general guidance on matters of interest only and does not constitute professional legal advice. You should not act upon the information contained in this publication without obtaining specific professional legal advice. No representation or warranty (express or implied) is given as to the accuracy or completeness of the information contained in this publication and to the extent permitted by law, Cowell Clarke does not accept or assume any liability, responsibility or duty of care for any consequences of you or anyone else acting or refraining to act in relation on the information contained in this publication or for any decision based on it.