The recent Full Court decision from the Federal Court Of Australia (Killer Queen, LLC v Taylor [2024] FCAFC 149) reversed a 2023 ruling that had previously favoured Australian fashion designer Katie Perry over the internationally renowned singer Katy Perry.

The designer had been trading under her name since 2008, and secured a trade mark for it (“KATIE PERRY” in class 25 for “clothes”). Meanwhile, the singer had begun to sell merchandise under her own name in Australia, particularly during tours.

The singer’s legal team argued that the singer’s use was descriptive and non-commercial in nature.

The question in the 2023 case was whether the singer’s use of her own name constituted “good faith” use or infringed the designer’s trade mark. The initial decision found that the singer’s use was commercial in nature and thus infringed the designer’s trade mark.

A rather unbalanced approach, that wouldn’t stand long!

In 2024, the Full Court overturned the earlier decision, ruling that the singer’s use of her own name was mainly descriptive and closely tied to her identity as a musician, not as a brand competing directly with the designer’s fashion business.

That said, the singer successfully argued the “good faith” defence under section 122(1)(a) of the Trade Marks Act 1995, which allows individuals to use their own name in good faith. The court acknowledged that her descriptive and non-competitive use, as a globally recognized artist, could coexist with the designer’s local trade mark rights. However, it dismissed claims of “honest concurrent use” which might have allowed the singer to register a similar trade mark in class 25.

This case demonstrates the courts’ willingness to adapt their interpretations to the realities of global commerce, particularly where the activities of international celebrities overlap with local trade marks – and it will undoubtedly influence and provide food for thought for future trade mark disputes, not only in Australia but worldwide, seeing that most countries have incorporated similar approaches to “fair use” or “good faith”, when commercial use of a name is carried out by a natural person, cf. e.g. the European Trade Mark Directive’s Article 14(1)(a).