Original article by Rebecca Wood, Practice Group Leader, LegalVision.

Trade marks play a critical role in protecting the identity and reputation of your business. They can help distinguish your company’s goods and services from others and help consumers identify the source of the products they purchase. However, disputes can arise when two companies use similar names or marks that may cause confusion among consumers. This article will discuss a recent trade mark dispute between two fashion designers, Katy Perry and Katie Perry, and the implications of the court’s decision.

What is a Trade Mark?

A trade mark is a sign or symbol your business can use to represent goods and services in the marketplace. Trade mark registration is optional, and some businesses use their trade marks unregistered. However, registration provides the owner with exclusive rights. These rights can protect your brand from competitors using your trade marks without permission. 

For instance, consider a third party misuses your trade mark for goods and services similar to those claimed in your registration. In this case, they may be infringing on your trade mark and a dispute can arise.

The Trade Mark Dispute

Katy Perry is an American singer and songwriter who has entered the fashion industry with her line of products, including: 

• clothing; 
• accessories; and 
• fragrances. 

On the other hand, Katie Perry is an Australian fashion designer who has been operating her own label since 2006.

In 2008, Katy Perry filed a trademark application for her name in the United States, which was approved in 2010. Meanwhile, Katie Perry filed a trade mark application for her own name in Australia in 2008, which was also approved. However, the two trade marks were registered under different classes of goods and services. Therefore, there was no overlap between them.

A dispute arose between the parties when Katy Perry’s lawyers issued a cease and desist letter to Katie Perry’s company over using the name. In 2019, Katie Perry applied to remove Katy Perry’s trademark registration. She argued that it was too similar to her mark and could cause confusion among consumers. Ultimately, the Federal Court of Australia heard the matter.

What Was the Decision?

In April 2023, the Federal Court ruled in favour of Katie Perry that her trade mark had been infringed. They allowed her to keep her trade mark and dismissed Katy Perry’s infringement claim. Further, the Court found no likelihood of confusion between the two trademarks, as they were used for different classes of goods and services. The Court also noted that the two trade marks had coexisted peacefully for over a decade, and there was no evidence of actual confusion among consumers.

In reaching it’s decision, the Court considered the following:

• the strength of the two marks; 
• the degree of similarity between them;
• the nature of the goods and services involved; and 
• the channels of trade through which they are sold. 

In addition, the Court noted that both Katy Perry and Katie Perry are well-known in their respective markets. Therefore, consumers are less likely to be confused about the two brands.

Are There Any Implications?

The decision, in this case, has several implications for businesses and trade mark law. We outline these implications below. 

Conducting Trademark Searches

If you are considering launching a new brand, it is essential to conduct thorough trademark searches. Doing so will ensure that there is no potential for confusion with existing trademarks.

Register Your Trade Mark Under the Right Classes

It is essential to ensure that your trade mark is registered and will protect the specific goods and services your business offers. For instance, consider the Court’s decision in the case above. While Katy Perry’s trademark may be strong in the music and entertainment industry, it may be weaker in the fashion industry, where Katie Perry has established her brand identity.

Monitoring Potential Infringement

Thirdly, the case highlights the challenges of trade mark enforcement in the Internet age, where brands can easily cross borders and compete in global markets. Therefore, it is crucial to take swift action if you are concerned that another business infringes on your intellectual property rights. Indeed, as a business owner, you must be vigilant in protecting your trademarks and monitoring potential infringement by others.

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Key Takeaways

Protecting your business reputation is very important if you are a business owner. Indeed, the recent trade mark dispute between Katy Perry and Katie Perry proves you must be proactive in protecting your brand by registering trade marks and monitoring for infringement. 

If you need clarification on what to do to protect your brand, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.