In a closely watched decision, the High Court of Australia has ruled in favour of Sydney fashion designer Katie Taylor, overturning an earlier Federal Court decision that would have cancelled her registered “Katie Perry” trade mark in relation to clothing.
The case has attracted global attention, pitting Ms Taylor’s fashion label against international pop star Katy Perry (Katheryn Hudson). Beyond the celebrity angle, the ruling provides important guidance on trade mark reputation, celebrity branding and the limits of cancellation actions under the Trade Marks Act 1995 (Cth) (Act).
The background
Ms Taylor (whose birth name is Katie Jane Perry) launched her fashion label under the name “Katie Perry” in 2007 and applied to register the trade mark for clothing in September 2008.
Meanwhile, Ms Hudson had been performing as “Katy Perry” since 2002. Her companies later secured Australian trade mark registrations for the name in classes 9 and 41, covering music and entertainment, but not clothing.
In 2019, Ms Taylor sued entities associated with the singer for trade mark infringement, alleging they sold “Katy Perry” branded clothing in Australia. The singer’s company responded with a cross-claim seeking cancellation of Ms Taylor’s trade mark.
After a mixed journey through the courts (including the Full Federal Court ordering cancellation) the dispute ultimately reached the High Court.
What the High Court decided
In a 3–2 majority, the High Court allowed Ms Taylor’s appeal and reinstated her registration.
The majority found that the Full Court had erred in overturning the trial judge’s findings. Key points from the decision include:
Reputation must relate to the relevant goods or services
The Court held that the reputation relied on by Ms Hudson related to music and entertainment, not clothing. It rejected the argument that a celebrity’s reputation automatically extends to merchandise simply because pop stars commonly sell branded products.
Celebrity fame is not the same as trade mark reputation
The Full Court had effectively treated the personal fame of Katy Perry as equivalent to reputation in the trade mark itself. The High Court said that approach was incorrect.
No real likelihood of consumer confusion
The trial judge had found no tangible risk of deception or confusion, noting there had been no evidence of actual confusion for more than a decade. The majority considered that finding was open and should not have been disturbed.
Courts should not reward “assiduous infringers”
Importantly, Justice Steward warned against allowing parties who knowingly infringe a registered mark to later rely on confusion created by their own conduct as a basis to cancel that mark.
Why this matters for brand owners
The decision provides several important takeaways for businesses and trade mark owners.
(1) Registered rights still matter: The ruling reinforces that a properly registered trade mark cannot simply be displaced because another brand, or celebrity, becomes more famous later.
(2) Reputation challenges have limits: To succeed under section 60 of the Act, the reputation relied on must be in the mark itself and in relation to the relevant goods or services, not just general fame.
(3) Celebrity brands may face limits when expanding into merchandise: The decision suggests that courts will be cautious about assuming that a celebrity’s reputation automatically extends into new product categories such as clothing or consumer goods.
(4) Infringement conduct can matter strategically: The High Court’s comments about “assiduous infringers” highlight the risks for businesses that knowingly continue using a mark despite an existing registration.
The broader impact
While the case still returns to the Full Federal Court to determine remaining issues and costs, the High Court’s ruling is likely to become a landmark authority on reputation-based trade mark cancellation claims.
For brand owners, particularly small businesses with earlier registrations, the message is clear.
A validly secured trade mark remains a powerful commercial asset, even when competing against global brands or celebrity influence.
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.