2 Teenage Dreams and One Name – Katie Perry v Katy Perry

US pop sensation Katy Perry recently lost a long-running legal battle after her company was found to have infringed the trade mark registration of a Sydney-based fashion designer.

Background

In 2008, an Australian fashion designer named Katie Perry registered her name as a trade mark for her clothing brand.

Despite releasing her first album under the name Katy Perry in 2008  (prior to then, she used her real name, Katheryn Hudson), she didn’t seek to register her stage name in Australia until 2013, some 5 years after the Sydney-based designer.   

What happened in this case

During Katy Perry’s 2014 Australian tour, she sold her ‘Prismatic World Tour’ merch, including various clothing items, at venues and through ‘pop up’ shops. 

Katie Perry, the Australian designer, argued that the similarity between her name and the pop star’s stage name would create confusion among consumers, potentially leading to a loss of business for her brand. She also claimed that the two brands were in direct competition with each other, as both sold clothing and accessories.

Katy Perry, on the other hand, argued that her name was a unique and distinctive trade mark that had been used in connection with her music and entertainment services for many years. She claimed that her use of the name would not cause confusion with the fashion brand, as her primary focus was on the music industry.

The case was heard by the Federal Court of Australia, which ultimately ruled in favour of the Australian fashion designer, deciding that the clothing sold for Katy’s 2014 Australian tour did breach Katie’s trade mark registration.

The Judge said that the US singer used her name in good faith and therefore doesn’t owe any personal compensation to the designer but that the star’s company, Kitty Purry, must pay damages for infringing the Australian designers trade mark registration.  While claims were also made for merchandise sold elsewhere and for Katy’s 2018 tour, the Judge rejected those claims.

The fight is real

This is not the first time people have fought over protecting their name. 

In 2016, Australian superstar Kylie Minogue famously faced off with American personality Kylie Jenner when the latter attempted to register KYLIE as a trade mark in respect of cosmetics.   Minogue’s team famously argued that Minogue is an internationally renowned artist who has been performing under the name KYLIE since before Jenner was born, whereas Jenner was “a secondary reality television personality.” Ouch! The two ended up reaching a confidential out of court settlement.  

Take Away

These cases highlight the importance of trade mark registration in all of the countries in which you intend to market and sell your goods and services and the potential for disputes to arise when two similar trade marks are in use. It also underscores the need for careful consideration and research when choosing a trade mark, as well as the importance of seeking legal advice to protect your brand.

The trade mark dispute between Katie Perry and Katy Perry (and the Kylies) serves as a cautionary tale for brand owners, highlighting the potential risks and challenges of trade mark registration and the importance of selecting a unique and distinctive trade mark to avoid confusion with other brands.

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