The designer was the registered owner of the trade mark “Katie Perry” for clothing in class 25 filed on 29 September 2008 (the Designer’s Mark) and commenced proceedings against the musician and performer Katy Perry and a related entity for trade mark infringement relating to sales of Katy Perry branded clothing. Katy Perry was the registered owner of the trade mark “Katy Perry” for “recording disks” in class 9 and “entertainment” in class 41 (the Singer’s Mark).
By its cross-claim the performer sought rectification of the Register by cancelling the registration of the Designer’s Mark pursuant to ss 88(2)(a) and (c) of the Trade Marks Act 1995 (Cth) on the grounds that use of the Designer’s Mark, at the time of filing would be likely to deceive or cause confusion because of the reputation of the Singer’s Mark at that date or alternatively at the time rectification was sought, was likely to deceive or cause confusion because of the circumstances applying at that time.
The primary judge found in favour of the designer and dismissed the singer’s cross-claim for rectification. However, on appeal, the Full Court overturned the primary judge’s findings on rectification, holding that the singer had established a reputation in Australia by September 2008 such that both grounds under s 88(2)(a) and (c) were made out and ordered cancellation of the Designer’s Mark.
The designer sought and was granted special leave to appeal to the High Court which held, by majority, that the Full Court had erred. Relevantly, the majority held that there was no error in the primary judge’s conclusion, that the use of the Designer’s Mark on clothing would not be likely to deceive or cause confusion due to the reputation that the Singer’s Mark had acquired in Australia in 2008 and that singer had not established there were any circumstances at the time the application for rectification was filed which meant that the use of the Designer’s Mark was likely to deceive or cause confusion.
By separate judgments from Justices Steward, Gleeson and Jagot, the High Court allowed the appeal with costs and remitted the matter back to the Federal Court for determination of the remaining issues. The decision is a win for local trade mark owners and continues the recent High Court interest in trade mark related matters following last year’s decision in Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50.
