Dark horse wins the race – Australian fashion designer prevails in High Court trade mark battle against Katy Perry

After a 17-year trade mark battle, an Australian fashion designer named Katie Perry (the designer) has prevailed against American singer Katy Perry (the singer) before Australia’s highest court.

On 11 March 2026, the High Court of Australia handed down its decision in Taylor v Killer Queen LLC [2026] HCA 5. The majority of the High Court overturned the Full Federal Court of Australia’s (Full Court) earlier decision and reinstated the trial judge’s original orders. Three of the High Court judges found in favour of the designer, whilst two of the judges found in favour of the singer.

As a result, the designer’s trade mark will remain on the Register and the singer’s company will be held liable for trade mark infringement. The High Court remitted the matter back to the Full Court to consider outstanding issues. This includes the relief available given the designer’s 10-year delay in commencing proceedings after first becoming aware of the infringement. This delay could give rise to the type of issues that arose in the Winnebago case.

Key takeaways

Over the course of the proceedings, a total of four judges found in favour of the designer (one at first instance and three in the High Court) and five judges found in favour of the singer (three in the Full Court and two in the High Court). The High Court’s decision reigns supreme, but the split demonstrates that trade mark cases such as this often turn on close arguments.

Although two of the High Court judges disagreed with the ultimate outcome in light of the particular facts, helpfully all of the judges agreed on the key legal principles:

1. If a trade mark has acquired a reputation in Australia in respect of particular goods/services, the use of a similar mark by another person in respect of other goods/services could be found to be likely to deceive or cause confusion, but this will ultimately depend on the facts of each case.
2. The ground of opposition under s 60 of the Trade Marks Act 1995 (Cth) (the Act), and the cancellation grounds under ss 88(2)(a) and 88(2)(c) of the Act, must be assessed by reference to the notional use of the applied-for/registered mark (i.e. any normal and fair use that could be made across the full ambit of the application/registration), rather than any actual use of that mark to date.
3. It is critical for new entrants to the Australian market to properly address any infringement risks before commencing use of the relevant mark in Australia. These risks must be assessed based on the notional full scope of the earlier mark’s monopoly on the Register, rather than investigations of actual use.
4. Registering a trade mark in Australia for the particular goods/services intended to be used remains a crucial step to not only protect against infringement of the mark, but also protect against infringement claims made by third parties.
5. A dormant potential for trade mark infringement, even for a number of years, does not mean that it is resolved. In this case, the designer brought the proceedings around 10 years after she first became aware of the infringement. The delay was explained because the designer was unable to afford litigation against the singer but later discovered litigation funding and then commenced the proceedings. However, this delay will need to be considered by the Full Court in deciding the type of relief available to the designer.
6. The decision reaffirms the significance of the ‘assiduous infringer’ principle in Australian trade mark law. A person who typically enters the market second, and knowingly infringes a pre-existing registered mark, cannot try to rely upon the confusion caused by their own conduct to seek cancellation of the registered mark.

Background

The designer started her ‘Katie Perry’ fashion label in Australia in 2007, based on the designer’s legal name at birth (although the designer also went by the name Katie Howell).

On the other hand, the singer adopted ‘Katy Perry’ as her stage name in the US in 2002. The singer’s musical career took off after a few years and the trial judge found that the singer had acquired an international reputation in her name in entertainment and music by the time that the designer started her business five years later.

The designer originally filed an Australian trade mark application for a stylised Katie Perry logo on 13 September 2007 in respect of ‘clothing and fashion designing’ in Class 42, which was accepted by IP Australia but allowed to lapse in July 2008. The designer subsequently filed an Australian trade mark application for the Katie Perry word mark on 29 September 2008, which proceeded to registration. By that stage, the designer knew the singer was an internationally famous pop star, and that musical artists often sold clothing merchandise bearing their names at concerts.

From early 2008, the singer’s manager, Mr Jensen, had identified Australia was going to be an important market for the singer’s career. This involved planning a worldwide concert tour scheduled for 2009, where Australia was to be included. In or around May 2009, the singer’s manager became aware of the designer’s use of the Katie Perry mark and was concerned that her purpose of doing so was to obtain a financial advantage based on the singer’s reputation and upcoming tour in Australia. The singer’s lawyers sent a cease and desist letter to the designer and offered settlement terms to co-exist, which were refused by the designer.

The singer filed an Australian trade mark application for KATY PERRY on 26 June 2009 in respect of music-related goods and services in Classes 9 and 41, as well as various kinds of clothing in Class 25. That application faced an objection based on the designer’s earlier trade mark registration. In order to overcome that objection and achieve registration of her mark in Classes 9 and 41, the singer deleted Class 25 from her trade mark application.

However, the singer proceeded to sell Katy Perry-branded merchandise in Australia, including clothing, headgear and footwear. The singer and her associated companies commissioned several merchandising companies to produce and sell such merchandise. At that stage, the singer and her management team were aware of the trade mark infringement risk, but considered there was no risk of anyone in Australia being confused because of the singer’s earlier overseas adoption and stronger reputation in the mark. The singer and her team also did not receive any complaint from the designer during the singer’s Australian concert tour in August 2009, at which Katy Perry-branded merchandise was sold, which led them to believe the issue had been dropped by the designer. However, years later, the designer’s lawyers sent a letter of demand to the singer’s team in September 2019 (just prior to the commencement of the original legal proceedings).

At first instance, the trial judge (Markovic J) found that the singer and her company Kitty Purry, Inc. had infringed the designer’s trade mark registration. However, the singer’s other companies, Killer Queen, LLC and Purrfect Ventures, LLC, were not found to be liable. The singer and her companies were originally unsuccessful in their attempt to cancel the designer’s trade mark registration. Both parties appealed the decision to the Full Court on various grounds.

On appeal, the Full Court overturned the trial judge’s decision and orders. The Full Court found, among other things, that the designer’s trade mark should never have been registered in the first place and should be cancelled because of the reputation in the singer’s Katy Perry mark in Australia both as at the filing date of the designer’s trade mark application (29 September 2008) and at the time the cross-claim was filed in 2019. The Full Court concluded that, because of that reputation and the common practice of pop stars selling clothing, the use of the Katie Perry mark by the designer was likely to deceive or cause confusion. See our article regarding the Full Court’s decision here for further details.

The designer then filed an appeal with the High Court of Australia, which agreed to take the case.

The High Court appeal

The appeal raised six questions of statutory construction concerning the provisions of the Act, which were answered by the High Court as follows:

1. Can a trade mark acquire a reputation in Australia, within the meaning of s 60(a) of the Act, other than a reputation in respect of particular goods or services?
   
   

   The answer is no. A trade mark can acquire a reputation in Australia only in respect of particular goods or services.

2. Can a trade mark that has acquired a reputation in Australia in respect of particular goods or services also be said to have acquired a reputation in Australia in respect of other goods or services?
   
   

   The answer is no. The fact that a trade mark has acquired a reputation in Australia in respect of particular goods or services does not mean that the trade mark’s reputation automatically extends to other goods or services.

3. If a trade mark has acquired a reputation in Australia in respect of particular goods or services, can it be said that the use of a similar mark by another person in respect of different goods or services would be likely to deceive or cause confusion for the purpose of ss 60(b) and 88(2)(a) of the Act?
   
   

   The answer is yes. If a trade mark has acquired a reputation in Australia in respect of particular goods or services, it is still possible that the use of a trade mark in respect of other goods or services would be likely to deceive or cause confusion. This will ultimately depend on the facts of each case.

4. For the purpose of the cancellation ground under s 88(2)(c) of the Act, can the Court only consider the actual use made of the registered mark at the time the application for cancellation was filed?
   
   

   The answer is no. The word “use” in s 88(2)(c) is referring to the notional use of the registered mark (i.e. any normal and fair use that could be made across the full ambit of the registration), rather than any actual use of that mark by the owner.

5. Does the Court have two separate discretionary powers to not cancel a trade mark registration under ss 88(1) and 89?
   
   

   The answer is no. The sole source of power for the Court to not order rectification of the Register – in circumstances where the Court has found one of the cancellation grounds in s 88(2) applies – is the power under s 89 of the Act.

6. Can the mere act of filing a trade mark application constitute an “act or omission” for the purpose of disentitling a trade mark owner relying on the Court’s discretion under s 89 of the Act?
   
   The answer is no. The mere fact of having applied for and obtained registration of the trade mark cannot itself be an “act or fault” for the purpose of s 89. However, this does not preclude any other circumstances in which the application was made, including the state of mind of the trade mark owner at the time of filing the application.

The majority of the High Court went on to find that the singer could not rely on the reputation in the Katy Perry trade mark for the purpose of cancelling the designer’s trade mark registration because:

1. Before the filing date of the designer’s trade mark application (29 September 2008), the singer’s reputation was confined to entertainment and music. Despite the common practice of pop stars selling clothing, the singer’s reputation did not extend to clothing because the singer herself had not actually sold any Katy Perry-branded clothing in Australia at that stage.
2. Ordinary people who were aware of the singer’s mark and its reputation would expect that any clothing associated with the singer would highlight some connection with the singer beyond the bare name “Katie Perry”, such as details of a concert tour or the name of a song or album. Although the designer’s registration is for the plain words Katie Perry and the Court must consider the likelihood of deception or confusion from the normal and fair use of that mark, this does not extend to an improper, illegitimate or bad faith use of that mark. The fact that the designer’s registered mark could hypothetically be used in combination with an image of the singer or some other logo/detail associated with the singer, or that Katie Perry-branded clothing might be sold outside one of the singer’s concerts, was not to be taken into account because no such use of the Katie Perry trade mark would be ‘normal and fair’.
3. Even though the designer’s use of the Katie Perry mark was relatively small compared to the singer’s use, the lack of any actual confusion during the 10 years that the marks were co-existing in the marketplace was sufficient to support an inference that it was not likely that people had been or would be deceived or confused by the designer’s use of the Katie Perry mark.
4. The conclusion that the use of the Katie Perry trade mark by the designer would not be likely to deceive or cause confusion by the time the singer’s cross-claim was filed in 2019 was supported by (a) the strength of the singer’s Katy Perry trade mark, which would help to dispel any likelihood of confusion given the differences in the spelling of the two marks, and (b) the fact that the trade channels through which the designer sold her clothing (websites, social media, markets and showrooms) demonstrated that the Katie Perry mark would overwhelmingly be seen rather than heard, which decreases the materiality of the aural similarity of the two marks.

In addition to the above, Steward J characterised the singer’s conduct in selling Katy Perry branded clothing in Australia over many years, with knowledge of the designer’s registered mark, as that of a “persistent or assiduous infringer”. Steward J found that the phrase “likely to deceive or cause confusion” in s 88(2)(c) of the Act must be construed in a restricted way so that it does not include deception or confusion which has occurred because of trade mark infringing conduct. Steward J reached this conclusion because “Parliament cannot have intended such a glaringly wrong outcome” and to find otherwise would produce an “extraordinary result” that would allow an infringer to take advantage of their own wrongdoing to challenge the mark they were infringing.

Given the majority’s findings that neither cancellation ground had been established, there was no need to consider whether the discretion under s 89 was enlivened.

The dissenting judges (Gordon A-CJ and Beech-Jones J) agreed with the majority in relation to the legal principles, but reached the opposite conclusion based on their analysis of the facts. Their Honours found that the Full Court was correct to conclude that the grounds for cancellation in ss 88(2)(a) and 88(2)(c) were established, and that the discretion to not cancel the registration under s 89 was not enlivened, because of:

1. The designer’s knowledge of the reputation of the singer’s trade mark and the common practice of music artists selling clothing at the time the designer filed her trade mark application.
2. The designer’s encouragement of the association between herself and the singer (e.g. by referring to the singer in social media posts, which the trial judge found was intended to assist in publicising the designer’s business).
3. The designer’s failure to take any action to enforce her trade mark rights for a 10-year period.

The different findings largely seem to have turned on how much weight was given to the common practice of pop stars selling clothing when assessing the likelihood of deception or confusion – the dissenting judges gave this significant weight (as did all the judges of the Full Court), whereas the trial judge and the majority of the High Court gave limited weight to this because the singer had not actually sold any Katy Perry-branded clothing in Australia before the filing date of the designer’s trade mark application.

Implications

The outcome of this long-running battle reinforces the importance of any trader who intends to begin using a new mark in Australia to check the scope of existing trade mark rights in the market and not make assumptions based on investigations of actual use about the propensity of the trade mark owner to bring infringement proceedings.

A failure to do so may lead to having to face the music – as Katy Perry has done in this case.