🏇 When the Race Stops a Nation — Who Owns the Moment?

IP and brand lessons from Melbourne Cup Day

Every year on the first Tuesday in November, Australia stops for a horse race — and an extraordinary showcase of intellectual property.

Behind the glamour of Flemington, the fascinators and the flutter, lies a multi-layered web of IP rights: trade marks, designs, broadcast rights, sponsorships, licensing deals, and image rights that turn the Cup into one of the country’s most valuable event brands.

1. The Cup as a brand

The Victoria Racing Club (VRC) owns an extensive portfolio of trade marks covering “Melbourne Cup”, “The Race That Stops a Nation”, and the stylised gold trophy design. Those marks underpin everything from official merchandise to broadcast and hospitality rights.

For the VRC, it’s not just a horse race — it’s a global brand, protected by careful registration, licensing and enforcement. The lesson for other major events? File early, file broad, and police consistently.

2. Who owns the horse’s name?

When a horse becomes famous — Think Winx, Black Caviar, Makybe Diva — the name itself becomes valuable IP. Owners often move quickly to register trade marks covering racing merchandise, breeding rights, and promotional uses.

But racehorse naming rules also complicate matters: under Racing Australia’s rules, a horse’s name is licensed rather than owned, and certain names (of champions, or those with cultural significance) are permanently retired. That means an owner’s branding ambitions must navigate both trade mark law and the racing registrar’s strictures.

3. Passing off and false endorsement

Every Cup season brings a flurry of betting apps, sweep generators, and corporate promotions trying to ride the coattails of the “Cup” brand. Some risk drifting into misleading or infringing territory — using “Melbourne Cup” or the trophy image without authorisation.

It’s a classic passing-off risk: implying a connection or endorsement that doesn’t exist. The same principle applies beyond racing — whether your brand is invoking a festival, a celebrity, or a social movement, the question is always: does your use suggest official connection?

4. Fashions on the field — designs and branding

Even the fashion stakes come with IP issues. Designers rely on copyright, design registration, and branding to protect original pieces and accessories that debut trackside. Increasingly, brands run their own protected pop-ups and virtual events — blurring physical and digital rights.

5. Modern twists: influencers and digital IP

Today, Cup-day marketing spills across Instagram and TikTok. Influencers tag official partners, brands push instant content, and deepfakes and AI imagery are starting to creep in. For rights-holders, monitoring unauthorised digital use (and generative reproductions) has become the new frontier of event IP protection.

Take-away for brands and advisers

• Register broadly: secure word, logo and shape marks early — even for event slogans.

• Control use: structure sponsorships, broadcast and influencer agreements with precise IP clauses.

• Monitor aggressively: unauthorised “association” can dilute event value fast.

• Think digital: protect imagery, NFTs, and virtual activations just as you would physical goods.

The Melbourne Cup may stop the nation — but the IP behind it never sleeps.

IMDb v DMDb: One Letter’s Difference Not Enough

Zumedia Inc’s attempt to register DMDb as a trade mark in Australia fell flat—thanks to its awkward proximity to a far more famous acronym: IMDb.

Zumedia, a Canadian company behind a digital media platform called “Digital Media Database,” applied to extend its international trade mark registration for DMDb into Australia. But IMDb, the internet’s go-to entertainment database, wasn’t about to let that slide. Backed by nearly 30 years of global use and widespread recognition in Australia, IMDb opposed the extension under section 60 of the Trade Marks Act 1995.

IP Australia sided with IMDb. Despite the difference in the first letter, Delegate Tracey Berger found the marks visually and aurally similar, especially given the overlapping services—both related to searchable databases of entertainment content. Australian users, she held, could easily assume DMDb was affiliated with or endorsed by IMDb.

Zumedia tried to argue that DMDb was a unique acronym and that “Db” simply stood for “database.” Ironically, that only strengthened the opposition’s case: as the Delegate pointed out, consumers often remember brands imperfectly. The shared “-MDb” element was enough to trigger a mistaken belief in a connection.

She also referenced prior cases—including AAMI and Tivo v Vivo—to reinforce the point: when a well-known mark has a strong reputation in the same field, even small differences won’t eliminate the risk of confusion.

The outcome?  Extension of protection refused. Costs awarded against Zumedia.

🎬 IP Mojo Takeaway: If your brand sits one letter away from an iconic name in the same industry, don’t count on slipping through. Trade mark law doesn’t look kindly on near-misses that come too close to the main act.

 

Perry v Perry – Round 3 in the High Court

The long-running IP clash between Australian designer Katie Taylor (aka Katie Perry) and US popstar Katheryn Hudson (aka Katy Perry) has now reached the High Court. Both sides have filed their submissions—and the gloves are well and truly off.

Let’s unpack the arguments.

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🎤 The Trade Mark at War

At the heart of the dispute is Taylor’s registered mark KATIE PERRY for clothing, registered in 2009. Hudson’s team argues that it should never have been allowed to stay on the register—because of her own fame under the name Katy Perry, and the likelihood of confusion in the public mind.

This fight has already been through:

• The Federal Court (where Taylor won on infringement, but the respondents failed to cancel her trade mark),

• and the Full Federal Court (which overturned the trial judge and ordered cancellation under ss 60 and 88(2)(c)).

Now, Taylor’s appeal to the High Court gives us an opportunity to see how the highest court will treat the tricky interplay between reputation, confusion, and celebrity brand extension.

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⚖️ Key Appeal Issues

The submissions squarely raise three points of trade mark law importance:

1. Reputation Must Be in a Trade Mark, Not Just a Name
   Taylor argues (citing Self Care IP) that reputation in a person isn’t enough—section 60 requires a reputation in a trade mark used to distinguish goods or services. The respondents say that “Katy Perry” was functioning as a mark in connection with music and entertainment—even if not for clothes—by the priority date.

2. Deceptive Similarity ≠ Confusion from Reputation
   Taylor says the Full Court wrongly blurred section 60 with the s 10 concept of deceptive similarity, using “imperfect recollection” logic that belongs elsewhere. She maintains that just because the names look similar doesn’t mean there’s a s 60 ground for cancellation unless confusion arises because of the earlier mark’s reputation.

3. Discretion Under s 89: Who’s at Fault?
   The Full Court held that Taylor’s act of applying for the mark—with knowledge of Katy Perry’s fame—was enough to defeat the saving provision in s 89. Taylor argues this turns s 89 into a dead letter. Is the act of registration itself always a fault? If so, what’s left for discretion to do?

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👑 Celebrity Brands and Trade Mark Realpolitik

The respondents press the idea that by 2008, there was an established trend of pop stars launching fashion lines—and that any member of the public hearing “KATIE PERRY” on a swing tag might assume a connection with the singer. They argue:

• Reputation in entertainment was enough to ground confusion over clothes;

• The law shouldn’t insist on technical “use as a trade mark” when real-world fame does the work.

Taylor says: Not so fast. Reputation should attach only to actual marks used to distinguish goods. And if the singer hadn’t sold clothes in Australia before the priority date—let alone registered a mark for clothing—why should she get a monopoly over a local designer’s name?

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🧵 Threads to Watch

This appeal gives the High Court a chance to clarify several issues that matter beyond this case:

• What counts as reputation in a “trade mark”? Is global fame enough?

• Does fame create a shadow monopoly over unrelated goods where the celebrity hasn’t yet traded?

• When is confusion “likely”? Must it be tied to reputation for the same goods?

• Is s 89 still alive? Or does knowledge at the time of filing always kill it?

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🪙 Final Stitch

This is a rare IP battle where both sides have established, legitimate reputations—and where delay, co-existence efforts, and evolving fame all muddy the waters. Whatever the High Court decides, it’s likely to have ripple effects across celebrity branding, merchandising strategy, and the interpretation of section 60.

🧵 Stay tuned.