Australian fashion designer, Katie Jane Taylor, who sells clothing under her maiden name Katie Perry, sued pop star Katy Perry for trademark infringement in October 2019. This was done on the basis that Katy Perry was selling clothes in Australia bearing a name that was “substantially identical with, or deceptively similar to” her trademark.
Katy Perry was indeed selling clothing in Australia bearing her stage name. However, the trademark ‘Katie Perry’ has been used by its owner since as early as 2006 in this jurisdiction and has been registered in class 25 for “clothes” in Australia since 2008. This gives the Australian designer exclusive rights to the trademark throughout Australia with regard to clothes for at least ten years, and further renewable every ten years.
While the American singer’s lawyers admit that the trademarks Katy Perry and Katie Perry are deceptively similar, they denied infringement and pleaded the good-faith defence, filing a cross-claim for the cancellation of the Katie Perry trademark, since Katy Perry had already accrued a reputation in Australia prior to the registration of Ms Taylor’s mark in 2008. They allege that the trademark is misleading and deceptive, and that consumers may be misled into believing that the Australian designer was associated with the singer.
Actually, legal trouble between the two parties began in 2009, when the singer opposed Ms Taylor’s application for the trademark Katie Perry despite it being her birth name. The case was later withdrawn. However, since then, Katy Perry had started selling her own line of clothing in Australia, both online and through outlets.
This case is a typical David and Goliath fight. The fashion designer did not have the financial resources to take on Katy Perry by commencing expensive legal proceedings. With the support of a global litigation funder, she has only been able to take action a couple of years after her mark began to be used by the pop star.
This, of course, begs the question – when does good faith become bad-faith bullying, based on rights that do not exist? We immediately think of “trademark bullying”, a practice where one party employs overly aggressive legal means to prevent another from using a trademark, outside of any reasonable interpretation of trademark laws, in order to try to drive them out of business. Especially, if one of the parties cannot afford the costs associated with enduring litigation, even if it has a valid defense.
Unfortunately, the history of the fashion and music industry is littered with similar trademark claims, and the weaker party would normally change its trademark to avoid baseless claims. In some instances, the parties would try to settle out of court, with the possible signing of a coexistence agreement.
The hearing for the case has been scheduled for November 2021. We’ll keep you posted on the proceedings.
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