Year	Event
September 2008	Katie Taylor lodges the Australian trade mark application for “Katie Perry” (for clothing).
Late 2008	Katy Perry (the singer) becomes internationally famous with her hit songs (“I Kissed a Girl”, etc.), but had not yet started selling clothes or merchandise in Australia under her stage name.
2009–2010	Katy Perry begins launching more merchandise globally (including clothing lines), but after Ms Taylor’s trademark filing date.
2010	Ms Taylor’s “Katie Perry” trade mark is officially registered in Australia.
Early 2010s	Katy Perry’s brand and merchandising activity (including clothing sales) expands significantly, including in Australia.
2019	Katy Perry’s companies apply to cancel Ms Taylor’s “Katie Perry” trade mark in Australia (leading to the later court battles).

You can see both sides … Ms Taylor says she is just using her own birth name and not in the entertainment industry, while Ms Hudson (the singer) says Ms Taylor has done the equivalent of a guy named John Pope registering PopeMobile as a trade mark and starting up a car yard in Vatican City.

Unsurprisingly, Ms Hudson tried to knock out Ms Taylor’s “Katie Perry” trade mark. There are various reasons you can do that, and the Roar singer’s reasons included that:

• The trade mark caused confusion with her own “Katy Perry” trade mark in which she had a real reputation (under s60 of the Trade Marks Act 1995 (TMA))
• Ms Taylor’s use of her “Katie Perry” mark was likely to cause confusion (under s88(2)(c) of the TMA)

The trial judge in the Federal Court wasn’t having it.  In his view, singer Katy Perry did not have a reputation in Australia for the sale of clothing, there was no real likelihood of confusion occurring, and he exercised his discretion (under s89 of the TMA) not to cancel Ms Taylor’s mark since she has adopted and used it innocently.

The Full Federal Court, though, were on Team Hudson on appeal, reversing the first decision and ordering cancellation of Ms Taylor’s mark because, in their view:

• Katy Perry’s reputation at the priority date was strong enough (even in name alone) to cause likely confusion (s60 again)
• Even though she wasn’t yet selling clothes in Australia at the priority date, it was common practice for pop stars to sell clothing and merchandise, so confusion was likely
• Ms Taylor’s use, even if limited, was likely to cause confusion in the future
• The trial judge was wrong to use his discretion under s89 because Ms Taylor’s act of applying to register her mark (while knowing of Katy Perry’s fame) contributed to the confusion.

So, off we go to the High Court.  The first hurdle was to get the High Court to grant “special leave” to appeal the Full Court’s decision (you have to ask for that leave because, unlike when you go from a trial judge to a Full Court on appeal, you are not automatically entitled to appeal to the High Court just because you didn’t like the Full Court’s decision).

Ms Taylor’s lawyers argued on the special leave application that the Full Court got it wrong because:

• The “likely confusion due to reputation” argument (under s60) only applies if the person has a specific reputation in relation to that trade mark for the relevant services, and Katy Perry the singer was not known at that time for her clothing sales – so the Full Court blurred her general fame with the requirement for a trademark-specific reputation
• The likelihood of confusion at a later date argument (under s88(2)(c)) focused improperly on the singer’s potential future use of her mark (that is, on the basis that one day she might sell clothes) rather than her actual use (which did not originally involve that at all)
• Filing a trade mark application like Ms Taylor did is not an “act” causing confusion that might prevent the trial Judge from exercising his discretion under s89 to cut Ms Taylor some slack.

The singer’s lawyers got a bit more technical but, essentially, argued that all of the above is really interesting but complete rubbish.

The High Court granted special leave and arguments begin in the High Court in early May … watch this space!