Trade mark owners can invest considerable effort in promoting and establishing the reputation of their brand, and so are justifiably angered if someone else comes along and starts using the same mark.
Normally, registering your trade mark means that you would have remedies against an infringing third party – but what happens when your brand is you, and your trade mark is your name? This is the situation that has arisen for Australian fashion designer Katie Taylor, who registered her maiden name, ‘Katie Perry’ as an Australian trade mark in relation to clothes in 2008. Those of you familiar with the pop music scene may already know where this is going – US singer Katy Perry has started selling goods including pizza-themed pyjamas and cat-ear headbands, which are either clothes or arguably similar goods to clothes. Katy-with-a-Y also registered her stage name ‘Katy Perry’ in Australia in relation to CDs, videos, downloadable content and entertainment services in 2004.
Significantly, she did not register the name in relation to clothes, although there are a number of marks including the name Katy Perry in relation to perfumes. Two of these are MEOW! BY KATY PERRY and PURR BY KATY PERRY, which would tie in with the cat-ear headbands. Katie-with-an-IE is now suing Katy with-a-Y and an associated company Killer Queen LLC for infringement of her clothing trade mark registration. Katy-with-a-Y’s lawyers have cross claimed that ‘Katie Perry’ is invalidly registered, because ‘Katy Perry’ had acquired a reputation in Australia before ‘Katie Perry’ was applied for. They have also argued that use of ‘Katy Perry’ is ‘use in good faith of a person’s name’, and argued that this also applies to Killer Queen LLC.
The Trade Marks Act does provide a defence against infringement, stating that a person does not infringe a registered trade mark when:
(a) the person uses in good faith:
(i) the person’s name or the name of the person’s place of business; or
(ii) the name of a predecessor in business of the person or the name of the predecessor’s place of business
Katy Perry is the stage name of Katheryn Elizabeth Hudson, based on an abbreviation of her first name and her mother’s maiden name. The defence does not normally extend to just a surname or to a business name, unless that is the name by which the person, or company, is known in the trade. The question here may be to what extent is Katy Perry known in the clothing trade. It is difficult to see how Killer Queen LLC hopes to rely upon this defence, unless they claim to be the successor in title to Katy Perry. The level of reputation of Katy Perry in Australia in 2008, and the likelihood that confusion would arise from use of ‘Katie Perry’ in relation to clothing will also be relevant to determining whether ‘Katie Perry’ can be invalidated.
This is, of course, not the first time that such issues have arisen. A few years ago, Kylie Jenner withdrew Australian applications for KYLIE COSMETICS in relation to cosmetics, and KYLIE in relation to entertainment services after a trade mark dispute with Kylie Minogue regarding rights in the name KYLIE.
Unless your name is Moon Unit Zappa, X Æ A-12, or something similarly unusual, protecting rights in a name is always going to be problematic because of the likelihood that someone else of that name will want to use it as a trade mark in relation to their own goods. The problem is compounded where the other party’s goods are not related to your goods. This is the reason that the Registrar refuses to accept applications for surnames alone if they are considered “common” in Australia. The risk is too high that a common surname will be required by another trader for similar goods.
As Australia is a ‘first to use’ country, you can protect the reputation of your name in relation to goods or services for which you are first to use the mark in Australia. To avoid later conflict with another person of the same name, it is recommended that you register your name for all the goods and services you are interested in. A 2004 registration of ‘Katy Perry’ for clothing would have blocked registration of ‘Katie Perry’ for the same goods in 2008. Because of the defence under the Act, earlier registration will still not prevent use of a name by another, provided the name is their own and use is in good faith, but actions may still be available under the Australian Consumer Law if the use is misleading and deceptive.