Killer Queen - Katie vs katy, “assiduous infringer” reasoning

This introduction to the recent Killer Queen case is presented by The Brief editorial before an article by written by Craig Simth SC of List G Barristers.

Introduction 

The legal findings around Australian designer Katie Taylor were more nuanced than a simple allegation of knowingly exploiting the fame of Katy Perry (the recording artist).

Taylor had been using the name “Katie Perry” in connection with fashion before the dispute escalated publicly, and importantly, “Katie Perry” was also her birth name before marriage. The courts acknowledged that both women had independently adopted their respective names commercially at a time when neither was initially aware of the other.

That said, the litigation later examined whether Taylor continued to leverage the growing fame of the singer once Katy Perry became internationally recognisable. Earlier appeal findings suggested there were aspects of Taylor’s branding and conduct that may have increased the likelihood of confusion among consumers. However, the final High Court decision ultimately rejected the argument that Taylor’s trade mark registration itself was deceptive or improperly obtained. The Court found her registration remained valid and enforceable in Australia.

The stronger criticism from the High Court was directed toward the sale of Katy Perry-branded merchandise in Australia after awareness of Taylor’s registered trade mark. One judgment described the conduct of the singer’s associated entities, including Killer Queen LLC, as “persistent” infringement after knowledge of the Australian registration existed.

So while public commentary often framed the matter as an Australian designer attempting to capitalise on a celebrity name, the courts did not conclusively characterise Taylor’s conduct as blatant or dishonest misuse. The final ruling instead reinforced the principle that registered Australian trade mark rights can prevail, even against a globally recognised celebrity brand.

The following article by Craig Smith SC was originally published on LinkedIn.

Where has the High Court left the discretion not to cancel a trade mark, following its Killer Queen decision last week? Ms Taylor succeeded by a 3:2 margin, having raised three special leave points, the first two of which seemed straightforward:

• For s60 the reputation must be in respect of a TM used for goods or services, as the section says, but the Full Court misapplied that to the facts (although query whether that affected their analysis of confusion); and

• s88(2)(c) of course must be dealing with notional use as it’s directed to the validity of a statutory monopoly. The third point raised issues with the operation of the s89 discretion, which I will return to.

It was common ground that the s89 discretion applied, because the relevant grounds were s60 and s88(2)(c). The Full Court in Killer Queen had also noted that a previous Full Court (Anchorage) had resolved the tension between the general discretion indicated by the word “may” in s88(1) and the confined discretion in s89 by explaining that the general discretion still applies, but only for grounds NOT addressed in s89(1).

But without referring to that authority, or to that specific issue, Jagot J (with whom Gordon ACJ and Beech-Jones agreed) said that the “sole source of power not to order rectification of the Register” pursuant to s88 is the power in s89. That obiter dictum would mean that no general discretion remains not to cancel a mark for other grounds including: s41, where the TM owner might have years or even decades of post-priority use and acquired factual distinctiveness; s58, where the prior owner of the mark may have since abandoned that mark, or assigned their rights to the registered owner; and s44, although the discretion in s44(3), and the timing issue established in the “Community Bank” case, likely provides an effective alternative (and to the argument that s44 is covered by s89).

It would take a reasonably brave judge to conclude that this dicta was not “seriously considered” (Farah Constructions), and so the issue may require legislative change. Re the SL point, the same three judges held that the mere act of filing a TMA cannot be an “act” for the purposes of s89(1), but filing it with relevant knowledge can be. I find it difficult to understand why filing the TMA with knowledge of another’s reputation is an act that has caused the confusion to arise, but at the same time (as Burrell & Handler explain in their SydLR article) a contrary interpretation is also problematic.

conclusion

Of course the result is that if the cause of the confusion no longer exists at the cancellation date (possibly decades later), there is no discretion not to cancel.Finally, as to Steward J’s “assiduous infringer” reasoning, a difficulty with that reasoning is that here most of the relevant increased reputation acquired post-priority date was in (non-infringing) entertainment services, and not in clothing per se.

Authored by Craig Smith SC of List G Barristers