Katy Perry v Katie Perry — what a longstanding trade mark battle teaches businesses about brand protection

In a major development after more than a decade of litigation, Australian designer Katie Perry (now Katie Taylor) has prevailed in her High Court case against global pop star Katy Perry. The longstanding trade mark battle shows just how dramatically brand rights can collide — and why early, careful intellectual property (IP) strategy matters for businesses of all sizes. 

Although decided under Australian law, the case raises issues that are relevant to UK brand owners, as many of the principles examined in the dispute and appeal process align closely with English trade mark law.  

Here, Colin Bell and Samantha Thompson explore how the dispute unfolded, why the courts reached different conclusions and the practical lessons that it offers for businesses.

Case overview: same name, different businesses 

The path to the High Court was shaped by a number of escalating interactions between the parties. 

The key moments are set out in the timeline below:

• 2002: Katy Hudson adopted the name Katy Perry and began performing under that name.
• 2007: Katie Perry launched a small fashion label in Sydney, trading under her birth name. She applied to register a trade mark for a logo that later lapsed when she failed to pay the registration fee.
• April 2008: Katy Perry began to achieve international fame following the release of the song I Kissed a Girl.
• July 2008: Katie Perry purchased the song on iTunes to support an artist with the same name.
• September 2008: Katie Perry applied to register ‘Katie Perry’ as a word trade mark for clothing.
• May 2009: Katy Perry's legal team contacted the designer to object to her use of the name and applied for an extension of time to oppose the trade mark application. However, the singer didn’t proceed with any legal action or opposition.
• 1 July 2009: Katy Perry's team sent without prejudice correspondence offering to settle via a co-existence agreement.
• 10 July 2010: Despite being agreed in principle and attending a meeting to finalise the deed, Katie Perry decided not to sign and settle the matter.
• October 2019: Katie Perry secured litigation funding and commenced proceedings against Katy Perry for trade mark infringement.
• 2023: The Federal Court ruled largely in favour of the designer, finding that Katy Perry infringed the Katie Perry mark (single judge).
• 2024: Katy Perry appealed the decision and the Full Court of Appeal found that the designer's mark should be cancelled given Katy Perry's reputation (three judges).
• 2026: The High Court issued its judgment, finding that the designer’s trade mark could remain on the register (five judges).

The Full Court and High Court cases both focused on whether the designer’s registered trade mark should be cancelled due to Katy Perry’s prior unregistered rights. Those prior rights were determined to exist but only in relation to music and entertainment and not clothing. Both the Full Court and High Court were therefore primarily concerned with whether the designer’s later trade mark registration for clothing created a likelihood of confusion given the singer’s reputation. 

Each decision demonstrated some conflicting views across the courts, with a 3:2 split decision in the final High Court decision. It’s perhaps notable that when you add up all the judges’ decisions across the three courts, the majority (5:4) would have found in favour of the singer. Despite this, the designer has ultimately been successful under the High Court in that her trade mark registration is allowed to stand. This underlines that trade mark cases can be finely balanced. 

Much like the UK system, the Australian appeal process isn’t an opportunity for the case to be reheard as if it was the first time in court. The appeal court’s decision shouldn’t act as a substitute of the appeal court’s own view just because it disagrees with the original decision. Instead, the appeal court will only intervene where it determines that the earlier decision is legally flawed. This procedural constraint helps to explain how the court decisions have been divided and how they can reach different outcomes on broadly the same material. This mirrors the approach in England where the appeal court shouldn’t reverse a ruling unless it’s satisfied that the ruling was wrong in law, involved an error of law or principle or wasn’t reasonable for a judge to have made.

The legal issue: likelihood of confusion 

The singer argued that her global reputation meant that the use of ‘Katie Perry’ on clothing would cause confusion and damage her brand. Notably, the singer’s case didn’t actively deny infringement of the designer’s mark, save for the ‘own name’ defence that applied to a limited degree. Instead, it was based on the argument that Katie Perry’s registration should never have existed and ought to be cancelled. 

However, the designer argued that: 

• She'd used her own name in good faith. 
• She registered her trade mark before the singer had any clothing‑related trade mark rights in Australia. 
• Consumers were unlikely to assume a connection between a small Australian fashion label and a global music artist. 

The High Court’s decision 

In a close majority decision, the High Court of Australia held that the Primary Judge’s original decision wasn’t untenable and hadn’t erred in law or principle. 

Key points from the judgment include that: 

• The designer’s trade mark didn’t breach trade mark law and could remain on the register. 
• Despite the singer’s fame, consumers were unlikely to be confused. The Court noted that the strength of Katy Perry’s reputation in music actually reduced, rather than increased, the likelihood that consumers would assume a connection with a local clothing brand. 
• Importantly, at the time the designer registered her trade mark, the singer wasn’t trading in clothing in Australia. 

The High Court indicated that — if the registration was valid (and it held that it was) — then the infringement finding effectively stands (subject to the questions of relief). Further, the singer’s reliance of the ‘own name’ defence didn’t hold much weight in that it only applied to her personally and not to her companies involved with the case.

It is, however, important to note that the High Court has remitted the matter back to the Full Court to consider outstanding issues relating to the relief available to Katy Perry given the designer’s delay in commencing proceedings after initially becoming aware of the infringement. 

Outstanding points 

The outstanding points to be determined by the Full Court include: 

• Whether the acquiescence and delay — namely not bringing the proceedings until 2019, some ten years after the original dispute — was unreasonable and, if so, whether it’s caused prejudice or unfairness to the signer, such that the designer should be prevented from pursuing proceedings now (‘laches’).
• The quantum of damages, in particular whether additional damages should be added for flagrancy.
• The extent of the injunction granted.

It’s notable that during the original dispute, the designer didn’t clearly object to the singer’s sale of merchandise and initially appeared willing to enter into a co-existence agreement on that basis. The designer's primary aim was simply to retain her own trade mark and continue trading. 

A co-existence agreement was agreed in principle but there was an issue over whether it should apply only in Australia or globally, along with some minor drafting amendments (largely relating to the wording around “fair and reasonable”). These final issues were ultimately not agreed. Until recommencement of the proceedings, both brands continued to co-exist in Australia for a number of years.

There’s also evidence that Katie Perry actively used the similarity between the brands to her advantage when advertising and marketing her fashion label — for example, a radio recording in which a Katy Perry song was introduced, followed by a prompt to buy items at katieperry.com.au. This may contribute to the argument that the designer had acquiesced and it would be unfair to the singer for the designer to pursue the claim ten years on. That said, the designer can argue that because no settlement was ever agreed, the singer couldn’t reasonably assume that the matter was settled. 

The singer may also seek to revisit arguments of non-infringement, relying on aspects of the Full Court’s conclusions on the lack of likelihood of confusion and the extent of the ‘own name’ defence, though this would appear to be outside the scope of the appeal proceedings.

Significant issues therefore remain to be litigated, along with the substantial additional costs to be incurred. Whatever the Full Court ultimately decides, a clean and comprehensive resolution seems unlikely — and much of this could potentially have been avoided had the parties reached a settlement along the lines originally proposed and correspondence and behaviour of the parties at the outset had been less aggressive and more conducive to agreement.

Three key takeaways for UK businesses & brand owners

1. Trade mark litigation is as much about strategy & timing as it is about legal principles

Rights can be strengthened or undermined by how and when they’re enforced. A party’s delay, inconsistent enforcement or failed settlement discussions can affect remedies available and give rise to defences such as laches or acquiescence. This case illustrates that early and decisive action, together with a clear commercial strategy, can be just as important as having the law on your side.  

The designer’s success relied on having registered her trade mark early and in the correct class. Even though her brand was far smaller, having a formal registration gave her enforceable rights.

2. Delay & informal tolerance can affect remedies, even where infringement is established

The designer stalled for a significant period of time after co-existence negotiations broke down, only initiating court proceedings once she obtained litigation funding in 2019. Her earlier lack of objection to the singer’s merchandise sales — combined with the fact that she had, in principle, agreed to a co‑existence arrangement — gives rise to the laches (acquiescence) defence raised by Katy Perry’s team. In this case, the High Court has referred the task of determining the decision back to the Full Court. 

The circumstances highlight the importance of acting promptly where a potential trade mark infringement is identified. A delay in bringing proceedings may permit the alleged infringer to rely on defences such as acquiescence on the basis that the claimant knowingly stood by while the infringing party built up goodwill in their brand. 

3. Early, well-advised settlement can preserve value that litigation destroys

The case might’ve been resolved years earlier through a co‑existence agreement allowing both parties to trade under defined conditions, avoiding the significant rise in costs and potential reputational risk. It’s therefore crucial for legal teams to properly assess — and clearly explain — the cost-benefit implications of declining settlement in favour of pursuing litigation, particularly where that litigation comes after a significant delay. 

The case also highlights how a combination of aggressive enforcement strategies and access to litigation funding can embolden parties to push cases beyond the point where a pragmatic settlement might otherwise have been reached. Here, that approach resulted in many years of litigation and an outcome that remains only partially unresolved, with issues such as laches and damages still outstanding.

In recent years, several high‑profile cases have been brought in relation to ‘own name’ disputes. This dispute is reminiscent of the Kylie Minogue v Kylie Jenner matter, where Minogue sought to block Jenner from registering a trade mark for the name ‘Kylie’ — a case that appears to have ended in settlement and co-existence. Similarly, the ongoing dispute between Jo Malone and Estée Lauder focuses on Malone’s use of her name after selling the rights to it many years prior. Together, these cases support the need for early and carefully considered brand strategy, particularly where a personal name is central to the brand identity.  

Talk to us

If you’re facing a similar dispute over a brand name, our expert intellectual property team offers support and advice at every stage — from early risk assessment and strategic options through to oppositions proceedings, enforcement and resolution. 

To discuss how we can support you, call 0333 004 4488, email hello@brabners.com or fill in our contact form below.