A 15-year trademark dispute between pop star Katy Perry and Australian fashion designer Katie Taylor (born Katie Perry) has reached a firework moment in the Australian High Court.

The dispute traces back to September 2008, when the designer filed to register the trademark under “Katie Perry” for clothing associated with her online fashion boutique. The filing came shortly after Katy Perry’s breakout single, “I Kissed a Girl,” gained international prominence earlier that year. Nearly eight months later, the singer sought to register the trademark “Katy Perry” in Australia covering prerecorded CDs and related entertainment services.

Legal disputes began in May 2009, even before the singer Katy Perry filed her trademark application, when the singer’s counsel filed a notice of opposition to the designer’s application and sent a cease-and-desist letter demanding the designer withdraw her trademark application. Nothing came of this, however, and both trademarks were eventually registered, the designer’s “Katie Perry” mark in 2009 and the singer’s “Katy Perry” mark in 2011.

Nearly a decade later in 2019, the designer initiated proceedings in the Australian Federal Court, alleging that the sale of “Katy Perry” branded merchandise during the singer’s 2014 Australian tour infringed the designer’s “Katie Perry” mark for clothing. After an initial victory for the designer in 2023, the decision was overturned on appeal. The Federal Court found that the singer had established sufficient reputation extending to clothing prior to the designer’s trademark filing and ordered the cancellation of the designer’s trademark in 2024.

Last week, the Australian High Court reversed the Full Federal Court’s ruling and held that the cancellation of the designer’s mark was improper. The High Court emphasized that a trademark can only acquire a reputation with respect to particular goods or services, and that the reputation in the singer’s “Katy Perry” mark in music and entertainment could not be extended to clothing on the basis of a “common practice” of pop stars selling merchandise without actual consumer confusion. In this regard, the High Court pointed out that the singer’s trademark application had included clothing but it was later removed in a 2010 amendment, a step that was described as “very much deliberate.”

Although the High Court awarded costs to the designer, the case remains ongoing and has been remitted to the Full Federal Court. Outstanding issues include whether the singer’s merchandise sales constitute infringement of the designer’s trademark, and whether the designer’s decade-long delay in initiating the infringement action affects the fairness of the proceedings.

While the decision is not binding on U.S. trademark law, it offers an interesting perspective on the relationship between reputation and the scope of protection across varying goods and services. The case also highlights the importance of ensuring that trademark filings align with both current and anticipated commercial activities, particularly where brands may expand into adjacent product categories.

We will continue to monitor developments in this case. If you have any questions regarding trademark protection or enforcement strategies, please contact your regular Armstrong Teasdale attorney or a member of the firm’s Trademark Services practice.

Read the full opinion, downloadable here.