In the long-running trademark dispute between international popstar Katy Perry and Australian fashion designer Katie Taylor, the Full Federal Court has overturned the first instance decision of Taylor v Killer Queen, LLC (No 5) [2023] FCA 364 and ordered that Taylor’s trademark be cancelled.

As we reported on the trial decision here, Justice Markovic found at trial that Perry and her associated companies infringed Taylor’s trade registration for KATIE PERRY in class 25 (Taylor Mark). However, Perry was able to rely on a defence for using her own name in good faith.

Some of the key issues on appeal were:

1. Do items such as footwear, headgear, caps, hats and headbands fall within the scope of the Taylor Mark which covered “clothes” in class 25?
2. Whether Perry, Killer Queen and Kitty Purry were liable as joint tortfeasors for trademark infringement of the Taylor Mark.
3. Whether Perry could rely on the defence for use of her own name in good faith.
4. Whether the Taylor Mark ought to be cancelled.

The Scope of Protection for “Clothes” in Class 25

The Full Court held that term “clothes” in class 25 does not extend to footwear and headgear. One of the key issues on this ground of appeal was whether the meaning of “clothes” should be interpreted having class 25 heading under the Nice Classification, “clothing, footwear, headwear”. In arriving at its decision, the Full Court did not rule out using class headings as an aid to resolve ambiguity in appropriate circumstances.

However, the Full Court held that primacy must be given to the words actuallychosen by the trademark owner to limit the scope of the monopoly claimed, which are then construed according to their ordinary meaning. By Taylor electing to claim only “clothes”, the term therefore could not be taken to have a broader meaning when she could have nominated “footwear” and “headwear” at the time of filing.

Joint Tortfeasorship

The Full Court made a complicated set of findings regarding the relationship between Perry and her associated companies and licensees. The key finding of interest was that Perry ought to have been considered a joint tortfeasor with one of her associated companies, Kitty Purry, as each of the infringing acts that were undertaken by it could only have occurred through the agency of Perry. Further, the merchandise bore Perry’s name and served to promote her, she had close personal involvement in the promotion of the merchandise and she was expected to derive financial benefit from the sales.

However, the infringement claim was ultimately unsuccessful for reasons explained below, so the question of tortfeasorship was moot.

The “Own Name” Defence

Taylor argued that Perry could not rely on an “own name” defence pursuant to section 122(1)(a)(i) of the Act because “Katy Perry” was not the popstar’s legal name, but rather a stage name. The Full Court upheld the primary judge’s findings and concluded that the “own name” defence was available to Perry, even though it an adopted name and she had assigned ownership of the corresponding trademark to one of her companies.

Cancellation of the Taylor Mark

In a surprising turn of events, the Full Court ordered the cancellation of Taylor’s KATIE PERRY mark on two alternate bases: that Perry had a reputation at the time Taylor’s application was originally filed such that consumer confusion was likely, and that ongoing use of Taylor’s trademark would likely result in consumer deception or confusion. This finding did not require Perry to establish any particular reputation with respect to the goods in question, i.e., clothing.

The Full Court further decided not to exercise discretion to maintain registration of the Taylor Mark because at the time of filing the application, Taylor was aware of Perry’s significant international reputation and since then had, occasionally, sought align herself with Perry in order to obtain some benefit and rejected offers to enter a coexistence agreement.

Key Business/Legal Takeaways

1. A trademark applicant must complete thorough due diligence when applying for a trademark and consider the reputation of both local and international third parties. One must consider whether, as a result of any third-party reputation, the use of a trademark is likely to deceive or cause confusion.
2. A trademark applicant must carefully select goods and services to accurately define the scope of the monopoly it intends to claim. The court will eschew reliance on class headings when construing the particular goods and services which are covered by a trademark registration.
3. That directors can be held personally liable for actions of their companies, particularly in circumstances where the actions undertaken by the company could only have been completed through the agency actions of its director.
4. The “own name” defence under section 122(1)(a)(i) of the Act is available not only to a person’s legal name, but also for pseudonyms and stage names.