I Maintained My Trade Mark and I liked It! High Court Protects Australian Designer’s Trade Mark for “Katie Perry” in Battle with Pop Superstar Katy Perry
On 11 March 2026, the High Court of Australia handed down its highly anticipated decision in Taylor v Killer Queen LLC [2026] HCA 5, in favour of Australian fashion designer Katie Jane Taylor (Australian Designer) and preserving her registered trade mark "KATIE PERRY" for clothing. The decision, reached by a 3-2 majority, overturns the Full Federal Court's order to cancel the Australian Designer’s trade mark.
1. The Background
To bring you up to speed in this saga, a recap of the background fact is summarised below.
The Australian Designer (born Katie Jane Perry) has designed and sold clothing under the brand name "KATIE PERRY" since around 2007, applying to register the word mark in class 25 for clothing on 29 September 2008 (the Designer's Mark). The second respondent, Katheryn Hudson — far better known by her stage name "Katy Perry" (Singer) — is a music artist based in the United States who has performed under that stage name since 2002.
In 2019, the Australian Designer commenced proceedings in the Federal Court alleging the Singer and related companies had infringed her Designer's Mark by selling "Katy Perry" branded clothing in Australia. The Singer (and her related companies) cross-claimed, seeking cancellation of the Designer's Mark on two grounds:
under sections 88(2)(a) of the Trade Marks Act (read with s 60) – alleging that because the Singer had a reputation in her name “Katy Perry” with respect to musical services (and, by extension, clothes) by the date the Designer’s mark was applied for, there was a real risk of consumer confusion should the Australian Designer use her mark with respect to clothes; and
under section 88(2)(c) - alleging that because of the reputation the Singer had accrued by 2019 in Australia with respect to clothes, there was a real risk of consumer confusion should the Australian Designer use her mark with respect to clothes.
The primary judge found in the Australian Designer’s favour on both the infringement claim and the cross-claim for cancellation. However, the Full Court of the Federal Court overturned the primary decision concluding that both grounds for cancellation were established and ordering cancellation of the Designer's Mark.
2. The High Court's Decision
The majority of the High Court (3 to 2 judges) held that the Full Court erred on both grounds for cancellation. The key findings are summarised below.
a) The First Ground - Trade mark reputation must be assessed by reference to actual goods or services, not industry practice
The majority found that the Full Court had erred by treating the "common practice" of pop stars selling merchandise, including clothing, as extending the reputation of the Singer's Mark to clothing in Australia, when there was no evidence of any "Katy Perry" branded clothing having been sold in Australia before the priority date of 29 September 2008 being the date the Designer’s Mark was filed.
As Jagot J explained, a trade mark can acquire a reputation in Australia only in respect of particular goods or services, and a reputation in respect of one category of goods or services does not automatically extend to another.
As Gleeson J explained (at [200]):
… the likelihood of confusion was remote because ordinary customers who would be likely to buy clothes bearing the Designer’s Mark would, if they thought about the possibility of connection with the Pop Star’s Mark, also notice the necessary absence of any other features of the Designer’s Mark to connect it to the goods or services in respect of which the Pop Star's Mark had acquired a reputation….
… [customers] would probably expect clothes associated with the Pop Star's Mark to bear some association with Katy Perry as a pop star apart from the bare name "Katie Perry", such as by displaying details of a concert tour by Katy Perry, or the name of a song or album released by Katy Perry.
In other words, even though Katy Perry (the celebrity Singer) had a reputation in musical services as at the date the Designer’s Mark was filed, the Designer’s notional use of the mark “Katie Perry” on clothes was not likely to deceive or cause confusion, because customers would expect to see other “Katy Perry” related information along with the clothes (e.g. a picture of the Singer or details of a song or an album from the Singer).
b) The Second Ground - A party cannot rely on confusion caused by its own infringing conduct to cancel a rival's mark.
In a particularly noteworthy aspect of the decision, Steward J found that the Singer contributed to any confusion in the marketplace. His Honour determined that the Singer’s persistent sale of "Katy Perry" branded clothing in Australia — conduct which had been found to infringe the Designer's Mark — materially contributed to any likelihood of confusion that might exist. This conduct was described as being assiduous infringement.
Drawing on the longstanding principle that no person should be permitted to take advantage of their own wrong, Steward J held that it would be "an extraordinary result" if infringing conduct could ground an application for rectification of the very mark being infringed.
Therefore, the Singer was unable to rely on the reputation developed from post priority date use of “Katy Perry” (that is, use of “Katy Perry” on clothes between September 2008 and 2019) to suggest that consumers would be confused by the Australian Designer’s use of “Katie Perry”.
3. Practical Implications for Trade Mark Applicants and Owners
This decision has significant practical implications for trade mark practitioners, applicants and brand owners in Australia.
The importance of being “first to file”: It was the Australian Designer’s business acumen and knowledge of intellectual property that led her to file a trade mark application which ultimately enabled her to defeat a pop superstar in the highest Court in Australia. If the Singer had filed a trade mark application with respect to clothing for “Katy Perry” before the Designer commenced use in around 2007, the Singer would have been the owner of the trade mark and would have blocked the application for the Australian Designer’s Mark. The biggest lesson for any business is if you are currently using or intend to use a trade mark, get in first! You should file a trade mark application as soon as possible.
Reputation is goods-specific: Trade mark reputation under s 60 does not extend across all categories simply because a celebrity or business is well-known. Brand owners must provide concrete evidence of reputation in respect of the relevant goods or services to prevent that other person obtaining registration.
Don’t be an assiduous infringer: Parties who sell goods under an infringing mark cannot then seek to cancel that mark by relying on consumer confusion caused by their own infringing conduct. This protects trade mark owners, particularly small businesses facing existing infringers.
At Sladen legal, our dedicated team of intellectual property specialists can help you to obtain the advice for all stages of your trade mark journey.
Thomas Howell
Associate
T +61 3 5226 8526
E: thowell@sladen.com.au
Michelle Dowdle
Principal Lawyer
T +61 3 9611 0114 | M +61 408 674 256
E: mdowdle@sladen.com.au
