2 weeks Ago By Steve Zemek
Singer Katy Perry has won her long-running trademark feud with a Sydney designer after an earlier Federal Court decision was overturned on appeal on Friday. Sydney woman Katie Jane Taylor, who runs the Katie Perry label, sued the I Kissed A Girl singer in the Federal Court over the sale of clothes in Australia, claiming trademark infringement. In April last year, Ms Taylor had a partial victory, with the court finding Ms Perry committed trademark infringements in social media posts promoting her Prismatic Tour in 2013 and 2014.
However the singer appealed to the Full Bench of the Federal Court, which on Friday found “Ms Taylor’s trade mark was not validly registered” and ordered that the registration of the designer’s traemark be cancelled. “This case is an unfortunate one in the sense that two enterprising women in different countries each adopted their name as a trade mark at a time that each was unaware of the existence of the other,” Justices David Yates, Stephen Burley and Helen Rofe said in their judgment. “Both women put blood, sweat and tears into developing their businesses.
One became an internationally famous entertainer in the music industry, the other, a small Australian fashion designer.” The court heard that Ms Taylor became aware of Ms Perry in July 2008 when she heard one of her songs. And Ms Taylor argued, she had already spent significant money and time on establishing her brand.
The court found that “it was after that awareness” in September 2008 that she filed an application for a trademark “that was deceptively similar” to Ms Perry’s stage name. The court found that she knew Ms Perry was a “nationally and internationally famous pop star”, and that performers often sell clothes and merchandise bearing their name. The pop star and her management proposed a “co-existence agreement” with Ms Taylor in July 2009, which would have allowed both to continue using their trademarks However that offer was rejected by Ms Taylor.
“We are not satisfied that sufficient reason has been shown to not cancel the registration of Ms Taylor’s (trademark),” the court said. The Full Court court set aside five of the orders made by the Federal Court last year. It also ordered that Ms Taylor’s trademark be cancelled - though that will be delayed in order for her to be allowed to consider whether she wishes to seek leave to appeal to the High Court.
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