A trademark is a territorially limited right by which a sign used in the channels of commerce for distinguishing goods and/or services of one natural or legal person from the same or similar goods and/or services of another natural or legal person is protected.

A sign protected by a trade mark may also consist of a personal name, provided that such a sign is capable of distinguishing in the course of trade the goods or services of one natural or legal person from the goods or services of another natural or legal person and that it can be represented in the Trademarks Register in a manner that enables the competent authorities and the public to clearly and precisely determine the subject matter of protection.

A sign containing the personal name of a person or the personal name of a deceased person may be protected only with the written consent of that person, or with the written consent of the parents, spouse and children of the deceased. A sign containing the personal name of a historical or other deceased notable person may be protected with the authorization of the competent authority and the written consent of the spouse and relatives.

What if, within your territory, for the purpose of carrying out your activity, you register your personal name which, by coincidence, is the name of a globally popular music star? How can this affect the acquired intellectual property rights in a registered trademark, and what effects can such circumstances have on the activity you perform?

Katie Perry and Katy Perry would likely have much to say about that, but the final word in this case was given by the High Court of Australia in March this year in the judgment KATIE JANE TAYLOR v KILLER QUEEN LLC & ORS [2026] HCA 5.

Katie Perry and Katy Perry – the right to protect a personal name as a trademark 

The Australian fashion designer Katie Taylor, born as Katie Jane Perry (Designer) in 2007, at a time when she used her maiden name, began developing a fashion brand. The focus of her business was the sale of clothing through local markets, an online store and social media platforms. At that time, as she stated during the proceedings, she had not heard of the singer Katy Perry, and she developed the fashion brand around her personal name “Katie Perry”. The designer changed her surname to Taylor in 2015, but continued to develop the brand around the name she was given at birth.

In September 2007, she also filed her first trademark application in Australia for the “KATIE PERRY” logo, but that application did not result in a registered trademark, as the registration fee was not paid on time. For that reason, a new application for the trademark “KATIE PERRY” followed one year later, in September 2008 (the priority date), for clothing in class 25 of the Nice Classification. This application was filed only a few months after the release of the debut hit of the music artist and performer Katy Perry, “I Kissed a Girl”.

When Katy Perry, whose birth and real name is Katheryn Elizabeth Hudson, performed in Australia for the first time in 2008, an online store was also created through which goods bearing the sign “Katy Perry” were sold worldwide. The dispute escalated when merchandise associated with Katy Perry, including hoodies, jackets, T-shirts and sweatpants, was sold during the singer’s tour in Australia in 2014. The designer claimed that the sale of those products constituted an infringement of her trademark.

The music artist and performer Katy Perry also registered a trademark in Australia with the name which, unlike the designer, she did not acquire at birth, but which she uses in performing and public appearances. The trademark was registered for recording disks in class 9 and entertainment in class 41 of the Nice Classification. Although this trademark application, filed in 2009, also covered clothing in class 25 of the Nice Classification, during the trademark registration proceedings the list of goods and services was limited, so that the singer abandoned the registration of the “Katy Perry” trade mark for goods in class 25.

The essential issue in dispute between the designer and the singer was whether the goods sold by the singer during her tour in Australia infringed the trademark right of the local fashion brand which had been operating under the name “Katie Perry” since 2007, although the application for that type of goods was filed in 2008 and entered into the Trade Marks Register in Australia the following year, precisely at the time when the singer began her global success.

The long-running legal battle began in May 2009, when the singer filed an opposition to the registration of the fashion designer’s trademark and sent cease and desist letters claiming that the designer had unlawfully filed her trademark application in the form of her personal name acquired at birth.

The designer subsequently, in 2019, sued the singer, including her companies Killer Queen LLC and Kitty Purry Inc., before the Federal Court of Australia, claiming that her trademark had been infringed by the sale of clothing bearing the sign “Katy Perry” in Australia. The respondents filed a cross-claim seeking cancellation of the designer’s trademark, arguing that the singer had already acquired a sufficiently strong reputation in Australia in 2008 and that the “KATIE PERRY” trademark was likely to deceive or cause confusion as to the origin of the goods and services designated thereby. By way of cross-claim, the respondents requested the Court to examine whether the use of the designer’s mark at the priority date would be likely to deceive or cause confusion because of the reputation of the singer’s mark at that time, as well as whether the use of the designer’s mark at the time of filing the rectification application would be likely to deceive or cause confusion because of the circumstances then existing.

The first instance decision rendered in favour of the designer was overturned in 2024, when three judges of the Full Court of the Federal Court of Australia unanimously upheld the singer’s cross-claim, ordering that the “KATIE PERRY” trademark be removed from the Register. As reasons for that decision, two key grounds were stated:

• the designer was aware of the singer’s reputation at the time of filing the application in 2008;
• the risk of public deception significantly increased (due to the rise in popularity) by 2019, when the singer filed the cross-claim.

The designer appealed this decision to the High Court of Australia, which in early March 2026 rendered a judgment, by a majority of three out of five judges, in favor of the designer, thereby maintaining her trademark in force.

The High Court did not accept the argument that the singer had already acquired a significant reputation in Australia at the time when the designer filed the “Katie Perry” trademark application in 2008, stating that such reputation did not extend to clothing. The use of the designer’s mark for clothing would not be likely to deceive or cause confusion because of the reputation which the singer’s mark had acquired in Australia prior to the priority date, and the respondents failed to establish that, due to the circumstances existing at the time of filing the rectification application, the use of the designer’s mark would be likely to deceive or cause confusion.

The High Court judges emphasized that most of the merchandise sold by the singer in Australia consisted of clothing, even though her “Katy Perry” trade mark did not cover protection for that type of goods at all, particularly due to the limitation of the list of goods and services and the abandonment of registration for that type of goods already in 2009, which the judges described as “very much deliberate” and therefore impermissible conduct.

The High Court judges stated that, having regard to the “heightened strength” of the singer’s reputation, an ordinary consumer would not reasonably assume that products sold under the sign “Katie Perry” were connected to the international pop star. The High Court emphasized that a trademark may acquire a reputation only in relation to particular goods or services, and that the reputation of the “Katy Perry” mark in the field of music and entertainment cannot be extended to clothing on the basis of the “common practice” of pop stars selling merchandise without actual consumer confusion.

This case highlights not only legal, but also much broader principles:

• The possibility of protecting a personal name as a trademark;
• The territorial nature of intellectual property rights, as well as the relationship between the protection of small businesses and large market players with broader reputation and greater resources;
• A trademark may acquire a reputation only in relation to particular goods or services;
• If a trademark has acquired a reputation in relation to certain goods or services, the use of a similar sign by another person for other goods or services may lead to deception or confusion, but this always depends on the specific circumstances of the case;
• When assessing the likelihood of deception or confusion among consumers, the assessment is not based on the actual use of the mark, but on its notional use within the scope of protection arising from registration;
• The principle of the “assiduous infringer” in Australian trademark law implies that a person who later enters the market and knowingly infringes an earlier registered trademark cannot rely on the confusion it has itself created in order to challenge that trad mark

Although the High Court awarded costs in favor of the designer, the proceedings have not yet been concluded. The Full Court of the Federal Court must now resolve outstanding issues, including whether the sale of the singer’s merchandise constitutes an infringement of the designer’s trademark, as well as whether the ten-year delay in initiating proceedings by the designer affects the fairness of the proceedings.

Rather than a Conclusion

The Katie Perry and Katy Perry case clearly confirms that trademark law remains firmly tied to territory and to the specific goods and services for which a mark is registered, regardless of the global recognition of a sign. Even a strong reputation in one field, such as music and entertainment, cannot be automatically extended to other categories of goods, even when personal names are concerned. This further underscores the importance of proper and timely trademark registration in relation to the intended business activity. For business entities, this decision serves as a reminder that trademark protection strategy must be planned in advance and aligned with the actual and future scope of business operations.

At the same time, this case demonstrates that trademark law does not protect only large market players, but can also provide effective protection to small businesses that have acquired their rights in good faith and in a timely manner. Nevertheless, the differing outcomes throughout the proceedings indicate that such disputes are highly fact-sensitive, and that the final assessment will always depend on the specific circumstances of each individual case, particularly when it comes to the protection of personal names as trademarks.

This article is to be considered as exclusively informative, with no intention to provide legal advice. If you should need additional information, please contact us directly.