Pop star Katy Perry wins appeal in trademark trial against Sydney fashion brand Katie Perry

Pop star Katy Perry has won a major court victory in a long-running trademark dispute with a Sydney fashion designer with a similar name.

The American singer successfully appealed a Federal Court ruling last year over the use of her eponymous name and found that she had infringed on several occasions by using the trademark.

In June 2009, a series of trademark lawsuits were first filed over a trademark owned by Katie Jane Taylor, who uses her birth name to design and market clothing under the Katie Perry brand.

The court initially ruled in Ms Taylor’s favor, citing trademark infringements during Perry’s Prismatic Tour in Australia in 2014 and 2015, at pop-up stores in Sydney and Melbourne during that tour, and on the website trading company Bravado.

However, in a decision handed down in Sydney on Friday, the Federal Court ruled that the trademark should be cancelled, in part because the name was globally synonymous with the I Kissed A Girl singer when it was registered as a trademark, and further use could ” mislead” and “cause confusion”. “.

Ms Taylor said she was “devastated” by the verdict and had “lost everything”.

“It’s a David and Goliath battle,” she said.

She is covered by litigation funding from Litigation Capital Management to cover legal costs, but will have to pay out of pocket to rebrand her business.

She said the Australian legal system had failed her.

“My goal has always been to stand up, and I think it shouldn’t matter whether you’re a pop star or a small business—we all matter,” she said.

“It took a huge toll on me and my family.”

The court found that the name Perry was already an internationally recognized name

The court heard that singer Perry, whose real name is Katherine Elizabeth Hudson, “honestly adopted” the Katy Perry moniker in 2002, about five years before Ms Taylor launched her own label.

In the original decision, the court found that Perry did not have a strong enough reputation before the label was created to deceive or cause confusion among the public.

The judge laid out a number of reasons, including the difference in spelling of “Kathy” and “Kathy” that differentiated the trademarks, and that her name at the time only applied to music and had “no reputation in dress.”

But judges David Yates, Stephen Burley and Helen Rough found that the music and entertainment trademark’s reputation had “overlooked the relevant evidence”.

“In concluding that Katy Perry Mark lacked a clothing reputation, the chief judge ignored the common practice of pop stars selling merchandise, including clothing, at concerts and launching their own clothing brands,” they said.

“While some die-hard fans of Ms. Hudson may recognize the misspelling, the average consumer with imperfect memories of the Katy Perry mark, confronted with clothing bearing Ms. Taylor’s mark, is likely to be confused as to the source of the item and wonder whether it is related to Ms. Hudson.”

The definition of “clothing” is disputed

Ms. Taylor also failed to get the definition of trademark infringement expanded to include hats and shoes.

In the original decision, the court found that some of the items sold during Katy Perry’s tour were not infringing trademark infringement because some of the infringing items did not fall within the definition of “clothing.”

Ms Taylor challenged the definition of “headgear, caps, bonnets and headbands” and appealed the court’s ruling that clothing did not include shoes and headgear.

She told the court that if someone had ordered her to “take off her clothes” she would “naturally have assumed that this applied to all items of clothing”.

However, the court found that because Ms. Taylor did not expressly include headwear and footwear in her trademark, “there is now no basis for a broader interpretation of the word ‘clothing’.”

Peaceful coexistence is ‘no longer possible’

The court outlined a proposed coexistence agreement drawn up by Perry and presented to Ms Taylor in 2009, which would have allowed them both to trade under their respective brands.

Ms Taylor declined the offer.

“The absence of any actual confusion over the many years of coexistence suggests that there was no confusion on the part of consumers,” court documents state.

After rejecting the offer, Ms. Taylor filed an infringement case against Perry and businesses associated with her brand.

In the latest decision, the judges said that in this sense Ms Taylor “brought this result upon herself”.

“Unfortunately, it is no longer possible to return to the times of peaceful coexistence,” they said.

Ms Taylor’s “Katy Perry” trademark will be canceled unless she applies for special leave to appeal to the High Court.

The court also ordered her to pay Perry’s costs of the appeal and cross-appeal.