Names can be among the most personal and powerful assets a business possesses. In worlds where branding often begins with identity itself, a name does not merely label a product, i.e. it carries reputation, recognition, and commercial value. The long-running dispute between Australian fashion entrepreneur Katie Taylor, who trades under the name KATIE PERRY acting as her trade mark, and American pop icon Katy Perry, (originally known as Katheryn Hudson), has exposed the delicate legal and commercial threats that arise when brands collide across borders. What might appear from the outside as a celebrity feud is a fundamental dispute about who may commercially claim ownership over a shared name in Australia.

The case now (appealed, hearing), continues as an appeal from a significant 2024 Full Federal Court decision which, in a major reversal, ordered the cancellation of Australian designer Katie Jane Taylor’s registered trade mark for “KATIE PERRY”. The Full Court found that because of the pre-existing and overwhelming reputation of the American singer Katheryn Hudson, known professionally as “Katy Perry”, Ms. Taylor’s mark was likely to deceive or cause confusion. The High Court hearing now scrutinizes the complex balance between protecting the integrity of the Trade Marks Register and the rights of a local business owner who, according to the Full Court, applied for her mark with full knowledge of the burgeoning global star.

Background of the dispute

The respondent, Katie Jane Taylor, is an Australian fashion designer who began selling “luxury loungewear” under her own name. Having been born Katie Jane Perry, she settled on the brand name “KATIE PERRY” in 2007. She applied for an Australian trade mark for the “KATIE PERRY” word mark on September 29, 2008, for goods in Class 25, specified as “clothes”.

The appellants are the corporate entities associated with Katheryn Elizabeth Hudson, the world-famous American music artist known as “Katy Perry”. Ms. Hudson’s musical career became highly active in 2007, and by July 2008, she was described as an “internationally famous pop star”. A core part of her business, managed by entities like Bravado, involved selling branded merchandise, including clothing, at her concerts and online.

The conflict began in May 2009, when Ms. Hudson’s management became aware of Ms. Taylor’s trade mark application. Ms. Hudson’s lawyers sent a cease and desist letter and filed an application for an extension of time to oppose Ms. Taylor’s mark. However, they withdrew this opposition in July 2009. Evidence showed this was a “calculated risk,” acknowledging Ms. Taylor would likely be granted her mark and could “complain about trade mark infringement” later. Ms. Hudson even lodged her own application for “KATY PERRY” in Class 25 in June 2009, but subsequently withdrew it after Ms. Taylor’s prior mark was cited against it.

The Primary Decision and the Full Court’s Reversal

Years later, Ms. Taylor commenced proceedings against Ms. Hudson and her companies for trade mark infringement. In 2023, the primary judge of the Federal Court found in Ms. Taylor’s favour, ruling that Ms. Hudson and her company Kitty Purry, Inc. had infringed the “KATIE PERRY” registered mark. That said, the primary judge dismissed Ms. Hudson’s cross-claim to have Ms. Taylor’s mark cancelled.

This decision was appealed to the Full Court of the Federal Court, which, in November 2024, overturned the primary decision entirely. In this dramatic reversal, the Full Court allowed Ms. Hudson’s cross-claim and ordered that Ms. Taylor’s “KATIE PERRY” trade mark be rectified by cancelling its registration.

This cancellation was based on two key grounds from the Trade Marks Act 1995 (Cth), both of which the primary judge had rejected but the Full Court endorsed.

Ground 1, i.e. section 60 and the “Power of Prior Reputation”

The first ground for cancellation was Section 60, which provides that a mark should not have been registered if, before the priority date, another trade mark had already acquired a reputation in Australia, and “because of that reputation,” the new mark would be “likely to deceive or cause confusion.”

Ms. Hudson’s team argued that as of Ms. Taylor’s priority date (September 29, 2008), “Katy Perry” the singer already had a substantial reputation in Australia. The primary judge agreed Ms. Hudson had a reputation for “music and entertainment” but found this would not be likely to cause confusion for Ms. Taylor’s mark in relation to “clothes.”

The Full Court found this was an error. It held that the primary judge had “unduly confined” the singer’s reputation. The Full Court’s reasoning rested on evidence that it is a “common practice” for pop stars to sell merchandise, including clothing, and to launch their own fashion labels. This practice of “brand extension” was a key factual circumstance. Therefore, because of Ms. Hudson’s existing fame in music and this common practice, an Australian consumer seeing “KATIE PERRY” on clothes in 2008 would be likely to be confused or wonder if the goods were associated with the singer. The Full Court also noted that the absence of actual confusion (which Ms. Taylor relied on) was not determinative, as it could be explained by the small scale of Ms. Taylor’s business.

Ground 2, i.e. section 88(2)(c) and confusion in the modern day

The second, and independent, ground for cancellation was Section 88(2)(c). This section allows for rectification if, “because of circumstances applying at the time when the application for rectification is filed” (in this case, 2019), the use of the mark “is likely to deceive or cause confusion.”

By 2019, Ms. Hudson’s reputation was immense and indisputably extended to clothing and footwear. The primary judge had found that this prevented confusion, reasoning that Ms. Hudson was a “victim of her own success”, i.e. her brand was so strong that consumers would not mistake Ms. Taylor’s products for hers.

The Full Court again found this reasoning to be flawed. It held that for two marks that are deceptively similar (as “KATY PERRY” and “KATIE PERRY” are), a stronger reputation does not prevent confusion; it enhances the likelihood of it. Consumers would be more likely to see the “KATIE PERRY” mark and incorrectly assume it was connected to the famous singer. Thus, this ground for cancellation was also established.

The Section 89 “Discretion”

This led to the most critical legal question. Even if a ground for cancellation is established, Section 89 of the Act gives the court a discretion not to cancel the mark. However, this discretion is only available if the registered owner (Ms. Taylor) “satisfies the court that the ground relied on… has not arisen through any act or fault of the registered owner.”

The Full Court found that Ms. Taylor could not access this discretion.

The court held that Ms. Taylor’s “act” of filing her trade mark application in September 2008 was the very “act… through which” the ground for cancellation arose. This was not because applying for a mark is inherently a fault, but because she did so with knowledge. The evidence showed that by her application date, Ms. Taylor was aware of Ms. Hudson, her international fame, and the common practice of pop stars selling merchandise. By applying for a deceptively similar mark in that context, she committed the “act” that led directly to the likelihood of confusion, disqualifying her from the court’s discretion.

The Full Court further noted that even if the discretion was enlivened, it would not have exercised it in Ms. Taylor’s favor, citing the public interest in the integrity of the Register, Ms. Taylor’s rejection of a 2009 coexistence proposal, and her own conduct in seeking to align herself with the singer on social media.

The Appeal to the High Court

In September 2025, the case was heard by the High Court of Australia. Ms. Taylor’s counsel argued that the Full Court had made fundamental errors of law.

Firstly, it was argued the Full Court wrongly expanded Ms. Hudson’s Section 60 reputation beyond “music” by relying on a vague “common practice” instead of actual trade mark use for clothes.

Secondly, it was argued the Full Court applied the wrong test for Section 88(2)(c). Ms. Taylor’s side contended the test should be based on her actual use (which had caused no confusion for ten years), not a notional use. It was submitted that the Full Court’s approach allows a large, infringing entity to “swamp” a smaller, registered owner and then use the resulting confusion (caused by its own infringement) as a basis for cancellation.

Thirdly, and most critically, Ms. Taylor’s counsel argued the Full Court’s interpretation of the Section 89 discretion was “upended.” It was submitted that the “act” of merely applying for a trade mark cannot be the disqualifying “act or fault,” or the discretion would be meaningless. The ground for cancellation, it was argued, arose not from Ms. Taylor’s application, but from Ms. Hudson’s subsequent “calculated risk” to infringe and “swamp” the Australian market.

Ms. Hudson’s counsel countered that the Full Court was correct on all points. They argued that public reputation is broader than just trade mark use and that the “common practice” of brand extension is a key real-world fact. They maintained that the test for cancellation must be “notional use” to protect the integrity of the register against all potential uses of a confusing mark. Finally, they argued that “any act or fault” does include applying for a mark knowing it will likely cause confusion, and that Ms. Taylor’s subsequent delay and attempts to align herself with the singer were further “faults” that barred the discretion.

Key Takeaways for Brand Owners

The High Court’s pending decision is one of the most anticipated intellectual property judgments in recent years. The outcome will have profound implications for brand owners.

This case will provide critical clarity on how much weight a foreign entity’s reputation (without a local registration) carries against a locally registered Australian trade mark. The High Court’s ruling on the “common practice” of brand extension will be a key factor for all future trade mark applications.

Also, the Test for ‘Future’ Confusion would be established. The High Court’s decision on the “actual versus notional use” test for Section 88(2)(c) is vital. If the “notional use” test is upheld, it confirms that a trade mark owner’s rights are tied to the full scope of their registration, not just their current business operations.

Another important point is the “Act or Fault” Discretion. This is perhaps the most significant point. The High Court’s interpretation of “any act or fault” in Section 89 will define the boundaries of the court’s discretion to save a registration. If “applying with knowledge” is confirmed as a disqualifying act, it places a dramatically higher burden on new trade mark applicants to assess not only the existing register, but the entire global landscape of potential, un-registered competitors.

Conclusion

Thus, the Taylor v Killer Queen case pits the foundational principle of protecting a registered trade mark owner against the commercial reality of global celebrity and the public interest in a “pure” and non-deceptive register. It is a cautionary tale about the collision of brands in a globalized market, where fame acquired in one field (music) can, in the eyes of the law, create rights in another (clothes) even before a single item is sold. The High Court’s decision will be essential reading for all brand owners, international artists, and Australian businesses seeking to build and protect their identity.

Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.