The one that got away: High Court rules against Katy Perry in trade mark battle

The High Court has delivered the final chorus in the long-running trade mark saga between Australian designer, Katie Taylor, and US pop star, Katy Perry, and it’s the designer's victorious roar we hear after her successful appeal of the 2024 Full Federal Court decision. The High Court’s decision in Taylor v Killer Queen LLC [2026] HCA 5 confirms that reputation under section 60 of the Trade Marks Act must relate to particular goods or services, and a celebrity's personal fame does not automatically constitute trade mark reputation across all categories. As the pop star herself might have put it: this was the one that got away.

The backstory: teenage dream or trade mark nightmare?

In 2007, Katie Taylor (born Katie Jane Perry) left her role as a menswear sales manager at David Jones and began establishing a luxury loungewear label under the name "Katie Perry", being her birth name, which she had used socially since about 2006. Taylor's vision was to create ethically produced, Australian-made garments that could be dressed up or down. She debuted her collection at a fashion parade at Kambala School in November 2007 and commenced commercial sales at Paddington Markets in August 2008. On 29 September 2008, she lodged a trade mark application for "KATIE PERRY" in class 25 (clothing), which became the Designer Mark.

Meanwhile, Katheryn Hudson – better known by her stage name, Katy Perry – was building a career in pop music. By September 2008, her singles "I Kissed A Girl" and "Hot N Cold" had both reached the Australian top ten, and her album "One Of The Boys" had been certified gold. Hudson's representatives became aware of Taylor's trade mark application in mid-2009 and sent cease-and-desist correspondence demanding that Taylor withdraw her application, cease using the name "Katie Perry" on clothing, and refrain from using any similar name in the future. Taylor (then a self-funded sole trader with no legal representation) was distressed by the correspondence, and initial legal advice suggested the dispute would cost at least $20,000 to contest, which she could not afford. She eventually obtained pro bono legal assistance through the Youth & Enterprise Legal Centre.

After Taylor rejected a proposed co-existence agreement, the dispute simmered for a decade. Hudson's companies, including Killer Queen LLC, Kitty Purry Inc, and Purrfect Ventures LLC, continued to sell "Katy Perry" branded clothing in Australia through concert tours, pop-up stores, and retail outlets such as Target, Harris Scarfe, and Best & Less. Taylor did not commence proceedings until 2019, when she first became aware of litigation funding in 2018, having previously lacked the financial means to take on so well-resourced an opponent. Hudson's companies cross-claimed, seeking cancellation of the Designer Mark, and Taylor lost on appeal.

The legal issues in the battle of the Katies

The respondents' cross-claim to cancel the Designer Mark relied on two distinct pathways under the Trade Marks Act.

The first pathway invoked section 88(2)(a), which permits an application for rectification of the Register of Trade Marks (the Register) – including cancellation of a registration – on any ground on which the registration could originally have been opposed. The ground relied on here was section 60, under which a trade mark registration may be opposed where another trade mark had, before the priority date for the registration of the first-mentioned mark, acquired a reputation in Australia such that use of the first-mentioned mark would be likely to deceive or cause confusion. In this case, the respondents argued that by the priority date of the Designer Mark (29 September 2008), Hudson's mark had already acquired such a reputation in Australia and that the use of the Designer Mark would therefore be likely to deceive or cause confusion.

The second pathway invoked section 88(2)(c), which is a broader ground for rectification. It asks whether, at the time the application for rectification was filed (here, 20 December 2019), the use of the trade mark was likely to deceive or cause confusion. Unlike section 88(2)(a) read with section 60, this ground is not confined to the reputation of any particular mark; it permits consideration of all the circumstances prevailing at the relevant date, including any developments since registration.

If either pathway succeeded, section 89 provided a safety valve discretion under which the court could decline to cancel the mark, but only if Taylor, as the registered owner, could satisfy the court that the ground for rectification had not arisen through any "act or fault" of hers. The registered owner bears the onus of establishing this threshold. The expression "act or fault" extends to a range of conduct (both acts and omissions) in which the registered owner might have engaged that gave rise to the ground for rectification.

At the heart of the dispute was whether the Designer Mark should be cancelled because of Hudson's reputation, and whether Hudson's use of Katy Perry on clothing infringed Taylor's rights. The High Court appeal centred on two matters:

1. Taylor argued that the Full Court erred in finding that the reputation of the "KATY PERRY" mark – which was in music and entertainment, not clothing – was sufficient, when combined with the common practice of pop stars selling merchandise, to make the use of the Designer Mark likely to deceive or cause confusion under section 60.

2. Taylor argued that the Full Court erred in its application of section 88(2)(c), which assessed the likelihood of deception or confusion as at the date of the respondents' application for rectification (20 December 2019). In the alternative, Taylor contended that even if grounds for rectification were established, the Full Court was wrong to hold that the discretion under section 89 was not enlivened.

Key findings of the High Court

In a 3:2 majority, the High Court allowed Taylor's appeal and agreed with the primary judge's decision that use of Katie Perry in relation to goods within class 25 (the category under which clothing, footwear and headgear are registered) would be unlikely to deceive or cause confusion and that the Full Federal Court erred in finding grounds for rectification of the Register by cancellation of the Designer Mark.

The majority comprised Justices Jagot, Steward and Gleeson (who each delivered separate reasons). Acting Chief Justice Gordon and Justice Beech-Jones dissented. The justices agreed on the key questions of statutory construction raised by the appeal, including that section 60 does not require reputation in the same goods or services, that section 88(2)(c) is assessed by reference to notional (not actual) use, and that the mere act of registration is not of itself an "act or fault" under section 89. They diverged, however, on the application of those principles to the facts.

Reputation must be in the relevant goods or services

The majority held that, for the purposes of section 60, reputation must be established in respect of particular goods or services. While Hudson was undoubtedly famous in Australia by September 2008, her reputation was in music and entertainment, not in clothing. As Justice Jagot put it, “not a single item of ‘Katy Perry’ branded clothing had been sold in Australia before the priority date (29 September 2008), so there could be no reputation of the 'Katy Perry' trade mark in respect of clothes in Australia at that time".

No real, tangible danger of confusion

Despite years of co-existence, the High Court accepted the primary judge’s finding that there was no evidence of actual confusion between Taylor's and Hudson's clothing brands. The majority considered this absence of confusion over more than a decade to be a powerful factor against a finding of likely confusion.

The High Court unanimously confirmed that the section 60 test requires two steps: first, identifying the reputation of the earlier mark based on its actual use; and second, assessing whether the notional normal and fair use of the opposed mark – that is, how the registered mark could legitimately be used across the full range of goods covered by its registration – would be likely to deceive or cause confusion because of that reputation. A celebrity's reputation in one field (ie. music) did not automatically extend to all possible merchandise (ie. clothing). The “common practice” of pop stars selling T-shirts as merchandise was not enough to give Hudson a reputation in clothing for trade mark purposes, especially when Katie Perry clothing was not sold in a context identifying association between Katy Perry and the clothes. Justice Jagot noted that while the danger of confusion was “possible”, Hudson had not proven it to be “real or tangible”.

The “Assiduous Infringer” and section 89

Whilst the majority did not need to determine whether to exercise discretion under section 89 (as it was found the grounds for rectification were not established), Justice Steward provided a further, independent reason for allowing the appeal: even if Justice Jagot's reasoning on section 88(2)(c) were thought to be mistaken, section 88(2)(c) must be construed restrictively so that it does not encompass confusion caused by the infringing conduct of the applicant for rectification. Because any likelihood of confusion was the product of the respondents' "persistent and assiduous" infringement, the ground for cancellation under section 88(2)(c) was not satisfied.

A case of fine margins

This dispute was finely balanced. Across three levels of court, the judges were split 5:4 against the Australian designer, yet she ultimately prevailed due to the 3:2 majority in the High Court. This underscores how trade mark cases, particularly those involving reputation and confusion, are highly fact-dependent. Even with the judicial headcount against her, Taylor succeeded.

• For the designer (Katie Perry): four judges (Justice Markovic at first instance, and Justices Jagot, Steward and Gleeson in the High Court majority)

• For the singer (Katy Perry): five judges (Justices Yates, Burley and Rofe in the Full Court, and Acting Chief Justice Gordon and Justice Beech-Jones in the High Court minority)

The final chorus: what remains to be decided

The matter was remitted back to the Full Court of the Federal Court with respect to the remaining appeal grounds, including whether Ms Hudson infringed the Designer Mark, whether there are any applicable defences to the infringement, damages, and the costs of the Full Court appeal and the initial proceeding before primary judge Justice Markovic.

The High Court’s decision is a reminder that an Australian trade mark registration is not a paper tiger. No amount of international stardom, chart-topping hits or cultural ubiquity can simply override the rights of a registered owner who got there first. Those who build a business around a registered mark are entitled to expect that the Register will protect them, even against the most famous names in the world.