Biosimilars Deals 2021

Taylor v Killer Queen LLC [2026] HCA 5

Introduction

The battle of the KATY(IE) PERRY trade marks has been ongoing since 2019, but thankfully the High Court of Australia has now settled the issue once and for all.  In a decision handed down on Wednesday (11 March 2026), the High Court held that use of the Australian fashion designer’s KATIE PERRY trade mark for clothing would not confuse or deceive consumers in light of the reputation of the singer-songwriter’s KATY PERRY trade mark in Australia.  The KATIE PERRY trade mark will remain registered and in force.

Background

The background to this matter is complex and long and dates back as far as 2007, with the Federal Court of Australia and the Full Court of the Federal Court of Australia considering the issues before the High Court stepped in.

The key dates are set out below for ease of understanding the High Court’s decision:

Key Issues

With this background and timing in mind, the courts were asked to consider the following actions:

1. Section 60 – Whether use of the Designer’s Mark for clothing would be likely to confuse Australian consumers because of the existing level of reputation in the popstar’s KATY PERRY trade mark in Australia at 29 September 2008 (being, the filing date of the Designer’s Mark)?

2. Section 88(2)(a) – Should the Designer’s Mark be cancelled because it would be likely to confuse Australian consumers because of the existing level of reputation in the popstar’s KATY PERRY trade mark in Australia at 20 December 2019? (Basically, if section 60 were reassessed at this later date when the rectification cross-claim was commenced, would use of the Designer’s Mark be likely to confuse or deceive?)

3. Section 88(2)(c) – Should the Designer’s Mark be cancelled because use of the trade mark is likely to deceive or cause confusion because of the circumstances applying at 20 December 2019?

At first instance, Markovic J in the Federal Court found that use of the popstar’s KATY PERRY mark for clothing infringed the Designer’s Mark and that there was insufficient reputation in the popstar’s KATY PERRY trade mark at September 2008 and again at December 2019 for the Designer’s Mark to be cancelled under section 88.

The popstar’s team appealed the Federal Court decision to the Full Court of the Federal Court, with Yates, Burley and Rofe JJ finding that the Designer’s Mark should be cancelled because of the reputation existing in the popstar’s KATY PERRY mark in Australia at September 2008 and December 2019.  The Full Court’s decision overturned Markovic J’s findings, holding that the KATY PERRY mark had an extensive reputation for music, concerts and entertainment services and Australian consumers were very aware that popstars and celebrities tend to sell clothing and other wearable merchandise under their name or brand.  Because of that reputation, use of the Designer’s Mark would be likely to deceive or cause confusion and the registration should be cancelled.

The Aussie fashion designer appealed the Full Court’s decision to the High Court, asking the High Court to reverse the findings of the Full Court.

Consideration

On appeal, the High Court was asked to determine the following questions in the context of section 60, section 88 and section 89.  In the 97-page judgment handed down on 11 March 2026, Gordon A-CJ and Beech-Jones J delivered a  joint dissenting judgment; while Steward, Gleeson and Jagot JJ formed the majority, finding that Markovic J had not made any errors in the first instance decision and with each providing their own reasons for reaching the same overall conclusion.

For the sake of simplicity, we provide here a summary of the answers provided by the majority judges, Steward, Gleeson and Jagot JJ, on the key issues which formed the basis of their separate judgments upholding Markovic J’s first instance decision:

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

No.  Any reputation must be a reputation in respect of particular goods and services and is tied only to those goods/services. 

2. Can a trade mark that has acquired a reputation in Australia within the meaning of s 60 of the TM Act in respect of particular goods or services be said to have also acquired a reputation in Australia in respect of other goods or services?

Not without evidence.  Even though reputation may be established in respect of one set of goods or services, that reputation does not overflow into other types of goods and services unless evidence of use establishes that the reputation also exists for the additional goods and services.  For example, the popstar’s KATY PERRY mark was found to have reputation in Australia for entertainment services and music recordings but that reputation did not automatically extend or overflow to clothing, even though it is common for popstars and celebrities to sell clothing and other merchandise under their name or brand.  The evidence showed that not a single item of KATY PERRY-branded clothing had been sold in Australia before 29 September 2008 so there could be no reputation in clothing at that date.

3. Can a registered mark be cancelled under section 88(2)(a) where the use of that registered mark would be likely to deceive or cause confusion as provided for in section 60 “because of the reputation of [another] mark” in respect of goods or services other than those in respect of which the other mark had acquired a reputation in Australia?

Yes.  Section 60 (usually an opposition ground) doesn’t require the opponent to demonstrate reputation in respect of the goods or services covered by the opposed application.  The opponent – or the party pursuing section 60 – must simply demonstrate that consumers are likely to be confused or deceived because there is a nexus between the goods and services in which the reputation has accrued and the goods and services covered by the opposed or attacked mark.  There is no requirement for the respective sets of goods and services to be the same, similar or closely related; there must simply be a sufficient nexus in the mind of consumers.

4. Where an application for rectification has been made on the section 88(2)(c) ground that “because of the circumstances applying at the time when the application for rectification is filed, the use of the registered trade mark is likely to deceive or cause confusion”, is consideration of the use of that registered trade mark confined to the actual use made of that mark at the time the application for rectification is filed?

No.  Section 88(2)(c) requires consideration of notional use at the relevant date – that is, the Court must consider “any normal and fair use across the ambit of the registration of the trade mark, be that use actual, intended or possible” (see [219]).

5. Does s 88(1) of the TM Act, which provides that “[s]ubject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by” cancelling the registration, provide the court with a separate source of power not to cancel a registration?

No.  The only source of power for a Court to rectify the Register (i.e. cancel a trade mark registration) comes from section 89.  There is no separate power arising from section 88(1).

6. Section 89(1) of the TM Act enables the court to “decide not to grant an application for rectification” where a ground for rectification has been established under s 88(2) “if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner“. Can the mere filing of the trade mark application for registration by the registered owner constitute an “act or fault of the registered owner”?

No, the mere filing of a trade mark application does not amount to an “act or fault” for the purpose of section 89(1).  The Full Court had determined that the fashion designer’s filing of the Designer’s Mark in circumstances where she was aware of the popstar’s KATY PERRY mark and the common practice of popstars to use their trade marks for clothing and merchandise constituted an “act or fault of the registered owner” but the High Court disagreed.

Outcome

The appeal was allowed with the orders of the Full Federal Court being set aside, with the Designer’s Mark to remain on the Register and a certain popstar being left in a slightly awkward position…

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