95bFM Katy Perry or Katie Perry?
8 January, 2025
Interview by Athena Li-Watts, adapted by Marlo Schorr-Kon
Image: Katy Perry (Katherine Hudson), 2016 - Wikimedia Commons
Recently, American pop singer Katy Perry, has won a lengthy trademark dispute involving an Australian fashion designer who was born Katie Perry, now Katie Taylor.
Taylor had previously trademarked the name ‘Katie Perry’ to sell the clothing she designs; luxury loungewear, in 2008.
However, Katy Perry, whose real name is Katherine Hudson, upon her rising popularity, had her name trademarked in the US around 2007.
Hudson’s manager, upon realising Taylor’s trademarked name in Australia, attempted to threaten Taylor, however, then moved to a coexistence agreement, which would allow both parties the rights to their names.
However, Taylor had rejected this agreement.
Associate Professor in the Faculty of Law at the University of Auckland, Rob Batty, told 95bFM’s The Wire this created a tricky situation for the US pop singer.
“Hudson went on tour in Australia several times, and merchandise bearing the trademark Katy Perry was sold at concerts, pop-up stores, and the like.”
“Some considerable time after that, Miss Taylor, that is the Australian fashion designer, commenced trademark infringement proceedings against Miss Hudson for trademark infringement.”
Batty says that despite both the trademarks for their respective countries; Australia and the US, Hudson’s fame helped her win the dispute.
“[Hudson] has an international reputation, and because of that international reputation, at the date that Miss Taylor tried to register her trademark in 2008, the court found it would be likely that consumers would be confused.”
“… on that basis, the full federal court said Miss Taylor's trademark should be cancelled, and once the trademark's cancelled, then the infringement action falls away.”
Despite Hudson “being the bigger party with the deeper pockets,” Batty says this is not always an indicator of who may win a trademark dispute, such as with the case of Burger King being called Hungry Jacks in Australia.
“When Burger King was looking to expand into Australia in the 1970s, it found that an Australian business had already registered the trademarked Burger King in Australia and had opened several locations across the country.”
“That Australian business was able to prevent Burger King, the US company, from using the name Burger King in Australia.”
Despite the outcome of this dispute, Batting still suggests taking legal ownership of your services.
“I think for people who are less well known and who have fewer resources, the lesson is still to file your trademark in territories in which you're interested.”
