Killer Queen, LLC v Taylor [2024] FCAFC 149

Killer Queen, LLC v Taylor [2024] FCAFC 149

The use of the KATIE PERRY Mark by Ms Taylor was, because of the reputation in the prior Katy Perry Mark held by Ms Hudson, likely to deceive or cause confusion. Ms Taylor applied for her mark with knowledge of the prior mark and the common practice for celebrities such as Ms Hudson to sell clothing using their names. The errors in the primary judgment regarding the comparison of marks, weighting of actual confusion, constraining reputation, and reference to distinguishing indicia led to wrong conclusions. Therefore, the registration of the KATIE PERRY Mark should be cancelled. No sufficient discretionary reason existed not to order cancellation, given the circumstances and public...

Parties
Appellant / Cross Respondent: Killer Queen, LLC; Appellant / Cross Respondent: Katheryn Elizabeth Hudson; Appellant / Cross Respondent: Kitty Purry, Inc; Appellant / Cross Respondent: Purrfect Ventures, LLC; Respondent / Cross Appellant: Katie Jane Taylor
Jurisdiction
Australia
Judgment Date
22 November 2024
Procedural Posture
Federal Court Appeal (intellectual Property / Trade Marks) / Full Court Appeal From Federal Court Judgment
Outcome
Appeal allowed in part; cross-appeal allowed in part; lower court orders set aside; registration cancelled; costs orders as specified.
Legal Topics
Trade Marks, Infringement, Joint Tortfeasance, Cancellation of Registration, Good Faith Defence, Honest Concurrent Use, Own Name Defence
Intellectual Property Trade Marks Infringement Joint Tortfeasance Cancellation of Registration Good Faith Defence Honest Concurrent Use Own Name Defence

Case Brief

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Parties

Killer Queen, LLC

Appellant / Cross Respondent

Katheryn Elizabeth Hudson

Appellant / Cross Respondent

Kitty Purry, Inc

Appellant / Cross Respondent

Purrfect Ventures, LLC

Appellant / Cross Respondent

Katie Jane Taylor

Respondent / Cross Appellant

Procedural Posture

Federal Court Appeal (intellectual Property / Trade Marks) / Full Court Appeal From Federal Court Judgment

Legal Issues

  1. 1 Whether the KATIE PERRY trade mark should be cancelled due to likelihood of deception/confusion from reputation in the prior (Katy Perry) mark.
  2. 2 Scope of 'clothes' under trade mark registration: whether it includes headgear and footwear.
  3. 3 Whether certain parties are joint tortfeasors for trade mark infringement via licensing/merchandising arrangements.

Ratio Decidendi

The use of the KATIE PERRY Mark by Ms Taylor was, because of the reputation in the prior Katy Perry Mark held by Ms Hudson, likely to deceive or cause confusion. Ms Taylor applied for her mark with knowledge of the prior mark and the common practice for celebrities such as Ms Hudson to sell clothing using their names. The errors in the primary judgment regarding the comparison of marks, weighting of actual confusion, constraining reputation, and reference to distinguishing indicia led to wrong conclusions. Therefore, the registration of the KATIE PERRY Mark should be cancelled. No sufficient discretionary reason existed not to order cancellation, given the circumstances and public...

Court Disposition

Appeal allowed in part; cross-appeal allowed in part; lower court orders set aside; registration cancelled; costs orders as specified.

Orders

  • The appeal be allowed in part.
  • The cross-appeal be allowed in part.