Australian designer Katie Perry wins trademark case against popstar Katy Perry in High Court

AU, March 11 — Australian fashion designer Katie Perry has won her High Court battle with international pop star Katy Perry in a long-running trademark case. The dispute over the name began in 2009, when the singer was preparing for her Hello Katy Australian tour. But it wasn't until 2019 that the case picked up again, when the designer took the singer to the Federal Court, saying her trademark had been infringed by the sale of the singer's branded clothes, shoes and headwear.

In a majority decision, the High Court today found the designer's mark was not likely to harm the singer's reputation or cause confusion, and was not in breach of the trademark laws.

The case was about who has the right to sell clothes bearing the Katie Perry, or Katy Perry name. Katy Perry, the singer, was born Kathryn Elizabeth Hudson but adopted her stage name in about 2001. Katie Perry, the designer, was born with that name, but changed to other names, including Katie Taylor.

Katy Perry's lawyers told the High Court her stage name could not be divorced from the reputation of the name, when it came to marketing. The court heard the designer did not know about the signer when she first sought a trademark, although by the time it was registered, she had become aware of her after hearing the song "I Kissed A Girl".

The designer won in the first instance in the Federal Court but lost on appeal. The Federal Court appeal ruling was particularly harsh, with the judges finding not only that Katy Perry, the singer, had established a reputation in Australia before the clothing brand was established, but also that the Katie Perry clothing brand was liable to be cancelled.

That's because under the law, registration of a trademark can be opposed if another similar trademark has acquired a reputation beforehand, and if the names of the two brands are confusing or deceptive.

The singer's lawyers told the High Court the Katy Perry stage name could not be divorced from the reputation of the name, when it came to marketing.

But Katie Perry, the designer, said her actions were innocent, that she adopted the trademark for clothes first and applied to register the name before she had even heard of the singer. Her lawyers argued that she had used the brand name for a decade without any actual confusion.

By a majority decision, the High Court found that the use of the designer's mark on clothing was unlikely to deceive or cause confusion given the singer's reputation in Australia and was not in breach of the law. Costs have been awarded in Katie Perry's favour.