Tuesday, 23 June 2009

The Perry battle: Katy vs Katie

Would you believe it? There's more than one Katie/y Perry. The US pop starlet (famed equally for her annoyingly catchy pop tunes and bizarre fashion sense) Katy Perry (real name Katheryn Hudson) isn't happy. And here's why.

Australian fashion designer Katie Perry (real name Katie Perry - but sometimes Katie Howell) filed for an Australian trade mark last September (i.e. when Katy Perry had just exploded onto the music scene) to protect her name for clothing. Katy (with a -y) also plans to file for an Australian trade mark. News reports have it that US Katy has asked Australian Katie to stop using her own name for her clothing range, withdraw her trade mark application, and other relief you would expect from a cease and desist letter. Oh, and she's filed an opposition against the designer's mark. The US singer has since posted on her blog to say that she isn't suing Katie Perry - but simply putting her on notice of the American's rights (who is also filing for Australian trade mark protection), but the opposition is yet to be withdrawn.

So here is the issue. At what point are you not entitled to trade under your own name? In the UK, a registered trade mark is not infringed by a person's use of his own name, provided that the use is "in accordance with honest practices in industrial or commercial matters" (and, of course, that last bit is a grey area...).

This dispute brings home the importance of protecting your brand by securing trade mark registrations early on. Wait until your business has taken off and you may be too late if someone else has already registered your name as a trade mark. Whilst logic (and a perfect world) would assume that anyone should be entitled to use their own name, the reality is that a trade mark registration can prevent this. Designers (or celebrities who put their names to clothing or accessory ranges) are often caught out because they are not using their name "personally" - but instead, through a company. Although UK law has an "own name defence", this only applies if you are using your mark in your own name - and not through a company. Realistically, few designers operate in this way.

Fashionista wonders how this will play out before the Australian trade mark registry, particularly as the Australian designer has identified herself as Katie Howell on her trade mark application. Is this a case of possible co-existence between the two Kates, or will infringement successfully be argued? In which case, given that trade marks are national rights, which of the two Kates will be the infringing one in Australia?