The case is a sobering reminder that sometimes you can wake up to find that your own name has effectively been monopolised by someone more famous – even if you got there first. It's enough to make you want to Roar in frustration!
A Tale of Two Perrys
The story began innocently enough. Katie Taylor (née Perry) started her Australian fashion label in early 2007 initially using a different name for her label, before settling on her birth name KATIE PERRY. Around the same time, on the other side of the Pacific, Katheryn Hudson was building her music career under the stage name ‘Katy Perry’. By the time Taylor applied to register KATIE PERRY as a trade mark in Australia in 2008, Hudson had achieved international fame with hits like I Kissed a Girl. That fame would ultimately prove fatal to Taylor's trade mark rights, even though she had been first to use the name commercially in Australia.
The primary judge (Markovic J in Taylor v Killer Queen, LLC (No 5) [2023] FCA 364) found that Taylor could maintain her registration and that Hudson's use of KATY PERRY on merchandise infringed Taylor’s mark. However, the Full Court has now overturned that decision, finding that Taylor’s mark should be cancelled under sections 88(1)(a) and 88(2)(c) of the Trade Marks Act 1995 because its use would be likely to deceive or cause confusion given Hudson's reputation.
A Question of Confusion
With respect, the Full Court’s reasoning on confusion feels somewhat divorced from commercial reality. The Court placed great emphasis on Hudson's international fame and the common practice of pop stars merchandising clothing. But this sidesteps a crucial point – wouldn’t Hudson’s very fame make consumers less likely to be confused? The more famous Katy Perry becomes, the more likely consumers are to know the difference between merchandise from an international pop star and an independent Australian fashion label.
In contrast to the primary judge, the Court downplayed the significance of there being no evidence of actual confusion over many years of coexistence. While acknowledging this could be explained by the small scale of Taylor’s business, the Court arguably failed to give sufficient weight to this real-world experience in favour of theoretical possibilities of confusion.
Exercise of Discretion?
One aspect of the decision that I find troubling is the Court’s treatment of the discretionary factors that could have allowed Taylor’s mark to remain on the register. Section 89(1) of the Trade Marks Act gives the Court discretion not to cancel a mark if the ground relied on ‘has not arisen through any act or fault of the owner’. The Court found that Taylor’s act of applying for her mark with knowledge of Hudson's existence and reputation was enough to deny her this protection.
But this feels rather like blaming the victim. Taylor was simply trying to protect her legitimate business interests by registering her own name as a trade mark. She had already been trading under that name before becoming aware of Hudson. Should she have abandoned her birth name and chosen business identity just because someone else had coincidentally adopted a similar stage name and achieved fame? That seems a harsh outcome for someone who did nothing wrong except share a name with a celebrity.
A Missed Opportunity?
The case illustrates a fundamental tension in trade mark law between protecting established reputation and allowing honest concurrent use of similar marks. In 2009, Hudson’s team proposed a co-existence agreement that would have allowed both parties to continue using their respective marks. Taylor rejected this offer, and subsequently commenced infringement proceedings – acts which she might now have come to regret. But viewed from Taylor's perspective at the time, why should she have compromised her right to use, and to protect, her own name in her own country?
The Full Court’s suggestion that Taylor ‘brought this result on herself’ by rejecting co-existence feels particularly unsympathetic. It’s one thing to say that practical compromise might have been wise; it's another to effectively punish someone for standing up for what they believed (no doubt on advice) were their legitimate rights.
What's in a Name?
A particularly interesting aspect of the Full Court’s decision relates to the ‘own name’ defence in section 122(1)(a) of the Trade Marks Act. This provision allows a person to use their own name in good faith without infringing a trade mark. The Full Court held that Hudson could rely on this defence because Katy Perry is the name by which she is ‘usually known’, even though it is not her legal name.
Here the Court appears to have taken a surprisingly liberal view of what constitutes a person's ‘own name’. Hudson's legal name is Katheryn Elizabeth Hudson – Katy Perry is a stage name she adopted for commercial purposes. One might reasonably ask how this is any different from someone adopting any other brand name. After all, if I started trading as ‘Hugo Boss’, would I be entitled to the benefit of the ‘own name’ defence just because I had become known by that name?
The Court distinguished earlier corporate cases, such as SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1027, where the defence was confined to a company’s registered name. But if corporate entities are held to a strict standard regarding their ‘own name’, why should individuals be permitted greater latitude? The Full Court’s reasoning seems to create an odd asymmetry in the law.
There is precedent for this approach – though perhaps not in Australia. The Full Court referred to the UK decisions in Mercury Communications Limited v Mercury Interactive (UK) Limited [1995] FSR 850 (in which Laddie J supported the protection of adopted names), and Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110. However, this arguably misses the point. To my mind, the ‘own name’ defence exists to prevent trade mark law from unduly restricting people’s ability to trade under their actual names, not to protect commercially adopted pseudonyms.
This aspect of the decision could have significant implications beyond the present case. Could any person who becomes widely known by a pseudonym claim the benefit of the ‘own name’ defence? The Full Court's reasoning provides little guidance on where to draw the line between protected adopted names and mere brand choices.
Wider Implications
This case raises serious questions about how trade mark law deals with competing claims to personal names. The current framework seems ill-equipped to handle situations where someone has honestly adopted their own name as a trade mark, only to have that right effectively nullified by the later fame of another person using a similar name.
There might be value in considering legislative reform to better protect early adopters of personal name marks against later famous users. A radical option might be to introduce mandatory co-existence arrangements in appropriate cases, rather than leaving early users with the binary choice between potentially costly litigation or voluntary surrender of their rights.
Conclusion – When Goliath Adopts David’s Trading Name
For now, Taylor must decide whether to seek special leave to appeal to the High Court or accept that her registered trade mark rights have been extinguished by the thunderclap of international celebrity. While both parties may be entitled to use their respective names under the ‘own name’ defence – Taylor her birth name, and Hudson her adopted stage name – the Full Court's decision means that Taylor loses the broader protection that trade mark registration provides. She could, of course, always reapply, and perhaps gain registration based on nearly two decades of use. But if that were to succeed, it would only serve to highlight the futility of the Full Court’s refusal to exercise its discretion not to cancel Taylor’s registration.
The outcome raises two troubling issues for trade mark law. First, how do we properly balance the rights of earlier users against the reputation of later-famous entities, particularly when it comes to registered trade mark rights? Second, by accepting that the ‘own name’ defence extends to stage names and other commercially adopted pseudonyms, has the Full Court lowered the bar in a way that may have unintended consequences in future cases?
I can’t help but feel that the law should do better at protecting legitimate early adopters of trade marks. As Taylor said in a statement after the decision, ‘This case proves a trademark isn't worth the paper it's printed on.’ While that may be an overstatement born of understandable disappointment, it reflects a genuine problem with how our trade mark system handles these David-and-Goliath scenarios, particularly where registration rights are concerned.
In the meantime, Australian businesses would be wise to think carefully about their branding choices and how to protect them. As this case shows, even having a registered trade mark for your own name may not be enough if someone more famous comes along.
0 comments:
Post a Comment