By Shannan Welsh (Paralegal) and David Robbins (Principal Solicitor)
A big-ticket item in the media recently is the ‘David and Goliath’ trademark battle taking place in the Federal Court between Sydney-based clothing designer, Katie Taylor (nee Katie Perry), and American singer-songwriter Katy Perry (known legally as Katheryn Elizabeth Hudson).
Ms. Taylor has sold clothes under her self-named clothing brand ‘KATIE PERRY’ since November 2006, and has been the registered owner of the ‘KATIE PERRY’ trademark in Australia since September 2008.
Currently before the Federal Court, Ms. Taylor is claiming that the US singer infringed her trademark by selling ‘Katy Perry’ branded clothing at her 2014 and 2018 Australian concerts as well as clothing sold at Target and Myer which featured a mark ‘substantially identical or deceptively similar’ to Ms. Taylor’s trademark.
In response, Ms. Perry has filed a cross-claim aiming to have Ms. Taylor’s trademark removed and in her defence has denied that she infringed Ms. Taylor’s trademark on the ground she used her own name in good faith (per section 122(1)(a)(i) Trade Marks Act 1995 (Cth)).
Exploring the ‘good faith’ defence
The good faith defence is quite narrow in its scope, and those seeking to rely on it will be unsuccessful where there is any indication that use of the name was dishonest.
In Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd and Another (2016) 118 IPR 239 at , the Federal Court held that good faith requires ‘reasonable diligence to ascertain that a chosen name does not conflict with a registered trade mark’. The Court found that the test is ‘in one sense objective’, so that a person must take steps that ‘an honest and reasonable person would take to ascertain the ability to use a trade mark’ [at 111]. Additionally, the good faith defence may apply where use of the name was ‘honest use without ulterior motive, no intention to deceive, or to make use of the goodwill acquired by another trade’ (Australian Postal Corporation v Digital Post Australia  FCAFC 153, ).
The Court in Australian Postal Corporation (referring to Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182) held that, in the particular circumstances of that case, and in the context of s 122(1)(a)(i), even though there was no fraud or conscious dishonesty, the fact that the respondent knew about its competitor’s registered trademarks and reputation in Australia meant that use of the relevant marks was not in good faith.
Given that in 2009 Ms. Perry sent cease and desist letters in response to Ms. Taylor’s pending trademark, it will be interesting to see whether this awareness of the existence of Ms. Taylor’s trademark will affect her ability to rely upon the ‘good faith’ defence.
Why this case matters
Whilst the case is currently before the courts, it raises important considerations for those wishing to use their own name for their brand or business – particularly where there is already a registered trade mark of that same name in existence – and whether such use would be in ‘good faith’.
If you have any questions in relation to this case, or trade mark law generally, please contact a member of our Intellectual Property team.