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A Kat fight down under

This is a classic David v Goliath dual. In 2008, Katie Taylor registered the name “KATIE PERRY” as a trade mark in Australia in relation to clothing. She is not the Katy Perry (whose birthname is Katheryn Elizabeth Hudson and who rose to global fame as a singer around the same time). Importantly, the less well-known Ms Taylor registered her mark first in Australia.

Ms Hudson’s merchandising business, Kitty Purry, sells her branded merchandise using her renowned stage name, “KATY PERRY” (note the different spelling of KATY compared to KATIE).  However, the Australian court found that Kitty Purry’s use of the sign “KATY PERRY” on clothing sold during Ms Hudson’s 2014 Australian tour amounted to an infringement of Ms Taylor’s “KATIE PERRY” trade mark registration (being a highly similar, indeed phonetically identical, mark for identical goods). 

The famous Ms Hudson attempted to invalidate Ms Taylor’s trade mark registration in a counterclaim but this was dismissed by the Australian Court.

In the UK, the outcome would very likely have been the same. This case is a strong reminder that the timing of which party owned what and when is vital to trade mark disputes. It is also refreshing to see that the unequal financial resources of the parties did not result in this instance in Ms Taylor being coerced by a famous opponent.

How we can help

The IP team at Irwin Mitchell strongly advise all businesses to carry out searches to check on the availability of a mark before using it for the first time in a new country – even if the client believes its fame precedes them. It is also advisable to invest in your mark by attempting to register it, if possible, at the earliest opportunity. Having clearly established, registered rights makes the infringement arguments easier – especially for the less well-resourced party seeking to challenge a party with the greater resource.