For many businesses, a strong brand is one of their most important assets. But what happens if a well-known name has already been registered by someone else? The recent ruling in the Australian case between fashion designer Katie Perry and pop star Katy Perry demonstrates just how decisive trademark law can be. This blog explains what this case means for entrepreneurs and how you can avoid legal risks associated with trademark use.
The crux of the dispute: who has the right to the name?
The case centred on a seemingly simple question: who is entitled to sell clothing under the name “Katie Perry” or “Katy Perry”?
The Australian designer Katie Perry had been using her own name as a clothing brand since 2007 and had also registered it as a trademark. The American singer Katy Perry, known worldwide by her stage name, also sold clothing and merchandise under that name during her tours.
In 2019, the designer initiated legal proceedings for trademark infringement. She claimed that the singer’s sale of merchandise infringed her registered trademark.
The judge’s ruling
After several legal proceedings, the case eventually reached the Australian High Court, which ruled in favour of the designer.
The key considerations:
•The designer had a valid and previously registered trade mark
•There was insufficient evidence of a risk of confusion among the public
•The singer’s reputation did nothing to change this
•The singer sold merchandise with full knowledge of the existing brand
The judge even described the actions of the singer’s representatives as those of a “persistent infringer” of a validly registered trade mark.
Why this ruling is legally relevant
1. Registration takes precedence over prior use
A key principle of trade mark law is that priority is given to the earliest right. This means that timely trade mark registration may carry greater weight than (international) reputation.
Even a world-famous artist was unable to prevent a smaller company from continuing to use its brand in this case.
2. The risk of confusion is the decisive factor
In cases of trademark infringement, the question is whether the public might believe that the products come from the same company.
A factor in this case was that:
•both parties had their own target audience and positioning
•no specific cases of confusion had been identified
3. The sector and intended use are decisive
Although both parties were active in the clothing sector, this alone was not automatically sufficient grounds for a ban. The specific way in which a brand is used and perceived in the market is the decisive factor.
What does this mean for your business?
This case highlights a number of key points for business owners to bear in mind:
Ensure timely trademark registration
Registering your trademark is essential. Without registration, your legal position is considerably weaker.
Check existing trademarks in advance
Before you choose a name:
•check the trade mark register
•look for similar names (sound, spelling and meaning)
•assess whether there is any overlap within the sector
Don’t rely solely on a trade name
Registration with the Chamber of Commerce does not provide trademark protection. Only a trademark registration confers exclusive rights.
Houd rekening met internationale activiteiten
Do you sell products across borders or online? If so, a foreign trademark may also be relevant. Trademark rights are territorial, but conflicts can easily arise in an international context.
A brief real-life example
Een bekend voorbeeld dichter bij huis is de zaak rond Wendy’s in de Benelux. Een lokale ondernemer had de naam eerder geregistreerd, waardoor de Amerikaanse fastfoodketen jarenlang niet onder die naam kon opereren in deze regio. Net als in de Katy Perry-zaak woog het oudste merkrecht zwaarder dan de bekendheid van een grote speler
