High Court Upholds Australian Designer’s "Katie Perry" Mark Against Global Pop Icon Katy Perry
On 11 March 2026, the High Court of Australia delivered its eagerly awaited judgment in Taylor v Killer Queen LLC [2026] HCA 5, ruling in favour of Australian fashion designer Katie Jane Taylor (the Australian Designer) and upholding her registered trade mark "KATIE PERRY" for clothing. In a 3-2 majority decision, the Court reversed the Full Federal Court's order to cancel the Australian Designer’s trade mark.
1. Background
For those seeking context on this ongoing dispute, the key background facts are outlined below.
The Australian Designer (born Katie Jane Perry) has been creating and selling clothing under the "KATIE PERRY" brand since approximately 2007, lodging an application to register the word mark in class 25 for clothing on 29 September 2008 (the Designer's Mark). The second respondent, Katheryn Hudson — widely recognised by her stage name "Katy Perry" (the Singer) — is an American music artist who has performed under that moniker since 2002.
In 2019, the Australian Designer initiated proceedings in the Federal Court, claiming the Singer and associated companies had infringed her Designer's Mark by marketing "Katy Perry" branded clothing in Australia. The Singer (together with her related companies) filed a cross-claim seeking cancellation of the Designer's Mark on two bases:
pursuant to sections 88(2)(a) of the Trade Marks Act (in conjunction with s 60) - contending that since the Singer had established a reputation in her name “Katy Perry” in relation to musical services (and, by implication, clothing) by the date the Designer’s mark was filed, there existed a genuine risk of consumer confusion should the Australian Designer utilise her mark for clothing; and
pursuant to section 88(2)(c) - contending that owing to the reputation the Singer had accumulated by 2019 in Australia concerning clothing, there existed a genuine risk of consumer confusion should the Australian Designer utilise her mark for clothing.
At first instance, the primary judge ruled in the Australian Designer’s favour on both the infringement claim and the cancellation cross-claim. Nevertheless, the Full Court of the Federal Court overturned this decision, determining that both grounds for cancellation were made out and directing that the Designer's Mark be cancelled.
2. The High Court's Ruling
By a 3-2 majority, the High Court determined that the Full Court had erred on both grounds for cancellation. The principal findings are summarised below.
a) The First Ground - Trade mark reputation must be assessed by reference to actual goods or services, not industry practice
The majority concluded that the Full Court had erred by treating the "common practice" of pop stars merchandising, including clothing sales, as extending the Singer's Mark reputation to clothing in Australia, when no evidence existed of any "Katy Perry" branded clothing having been sold in Australia prior to the priority date of 29 September 2008 - being the filing date of the Designer’s Mark.
As Jagot J observed, a trade mark can only acquire a reputation in Australia with respect to particular goods or services, and a reputation concerning one category of goods or services does not automatically translate to another.
As Gleeson J observed (at [200]):
… the likelihood of confusion was remote because ordinary customers who would be likely to buy clothes bearing the Designer’s Mark would, if they thought about the possibility of connection with the Pop Star’s Mark, also notice the necessary absence of any other features of the Designer’s Mark to connect it to the goods or services in respect of which the Pop Star's Mark had acquired a reputation….
… [customers] would probably expect clothes associated with the Pop Star's Mark to bear some association with Katy Perry as a pop star apart from the bare name "Katie Perry", such as by displaying details of a concert tour by Katy Perry, or the name of a song or album released by Katy Perry.
Put simply, although Katy Perry (the celebrity Singer) had established a reputation in musical services as at the filing date of the Designer’s Mark, the Designer’s notional use of the mark “Katie Perry” on clothing was unlikely to deceive or cause confusion, since customers would anticipate seeing additional "Katy Perry" related content accompanying the clothing (such as an image of the Singer or references to a song or album).
b) The Second Ground - A party cannot rely on confusion caused by its own infringing conduct to cancel a rival's mark.
In a particularly significant aspect of the judgment, Steward J determined that the Singer had contributed to any marketplace confusion. His Honour found that the Singer’s persistent marketing of "Katy Perry" branded clothing in Australia — conduct which had been held to infringe the Designer's Mark — materially contributed to any likelihood of confusion that might exist. This conduct was characterised as assiduous infringement.
Invoking the established principle that no party should benefit from their own wrongdoing, Steward J held that it would be "an extraordinary result" if infringing conduct could form the basis for an application to rectify the very mark being infringed.
Consequently, the Singer could not rely on the reputation developed through post-priority date use of “Katy Perry” (that is, use of “Katy Perry” on clothing between September 2008 and 2019) to argue that consumers would be confused by the Australian Designer’s use of “Katie Perry”.
3. Practical Takeaways for Trade Mark Applicants and Proprietors
This judgment carries substantial practical implications for trade mark practitioners, applicants and brand proprietors throughout Australia.
The value of being “first to file”: It was the Australian Designer’s commercial astuteness and intellectual property awareness that prompted her to lodge a trade mark application, ultimately enabling her to prevail against a global pop superstar in Australia's highest Court. Had the Singer filed a trade mark application for clothing in respect of “Katy Perry” before the Designer commenced use around 2007, the Singer would have owned the trade mark and could have blocked the Australian Designer’s application. The critical lesson for any business is clear: if you are currently using or planning to use a trade mark, act promptly! Lodge your trade mark application at the earliest opportunity.
Reputation is category-specific: Trade mark reputation under s 60 does not extend across all categories merely because a celebrity or business enjoys general fame. Brand proprietors must furnish concrete evidence of reputation in respect of the relevant goods or services to prevent another party from obtaining registration.
Avoid assiduous infringement: Parties who market goods under an infringing mark cannot subsequently seek cancellation of that mark by relying upon consumer confusion caused by their own infringing conduct. This principle safeguards trade mark proprietors, particularly small businesses confronting existing infringers.
At Harwood Andrews, our specialist intellectual property team can provide expert guidance throughout every stage of your trade mark journey.
Thomas Howell
Associate
T 03 5226 8526
E thowell@ha.legal
Michelle Dowdle
Principal Lawyer
T 03 9611 0114 | M 0408 674 256
E mdowdle@ha.legal
