American singer and icon, Katy Perry, is reportedly appealing a decision made in the Federal Court of Australia which found she infringed on a Sydney designer’s trade mark.
Katie Jane Taylor, a mother of two, has operated a clothing label under her birth name, Katie Perry, since 2006, and has held the trade mark in Australia for more than a decade.The Sydney designer sued the singer – whose real name is Katheryn Elizabeth Hudson – claiming the singer’s use of the name in Australia on merchandise resulted in her brand being “substantially identical to or deceptively similar” to her own.
Taylor claimed the singer was using the trade mark in Australia since at least 2013, selling products not only at her concerts, but also at shops such as Myer and Target.
Justice Brigitte Markovic released her judgment following the lengthy trade mark dispute in April 2023, saying it was a “tale of two women, two teenage dreams and one name”.
Taylor had partially won her claims, while a counterclaim by Perry and her company, Killer Queen LLC, was dismissed.
Laws Governing Trade Marks in Australia
In Australia a trademark is a sign that is used or intended to be used that is distinguishable for goods and services. Trade marks commonly include, among other things, logos, business names, signatures, sounds and letterheads.
The owner of a registered trade mark has the exclusive right to use, and authorise others to use, the trade mark for 10 years (which is renewable, potentially indefinitely). This also means that you obtain a legal right to take action against any other business that tries to use the trademark to provide goods or services similar to the goods or services your business provides.
Trade marks in Australia are governed by the Trade Marks Act 1995 (Cth) (‘the Act’) as well as the Trade Marks Regulations 1995 (Cth). The legislation guides IP Australia in regulating trade marks in Australia so as to make sure it is consistent with international practices.
Section 17 and 27(b) of the Act requires there to be use or intent to use the trade mark before it can be registered. This is so as not to allow ‘squatting’ on certain trade marks. You cannot register a trade mark if you cannot provide evidence of your use or intent to use the trade mark.
Under section 41(2) of the Act, it is a requirement that a trade mark must be sufficiently distinguishable. A trademark application will be refused if the trade mark is not distinct enough. This means that the trade mark must have the capability of distinguishing your goods or services from another’s.
Once a trade mark is registered, it is owned by a registered owner.
A registered owner under section 6 of the Act is a person or body of persons, whether incorporated or not, whose name appears on the trade mark registration. Section 20 of the Act gives the registered owner of a registered trade mark the exclusive rights to:
- Use the trade mark; and
- Authorise the use of the trade mark by others (such as licensing the trade mark to be used by a separate company).
The exclusive rights commence from the date the trade mark is registered. In some cases, earlier rights can be determined if prior commercial use can be demonstrated.
The registered owner of a trade mark also has the power under section 22 of the Act to deal with the trade mark as they see fit, including by authorising other entities or people to use the trade mark in relation to the goods and/or services and obtain relief if there has been trademark infringement.
Green and Associates
If you are in need of legal advice, assistance or representation for any trade mark matters contact us on (02) 8080 7585 to arrange a consultation with one of our expert Trade Mark solicitors.
