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of the American's rights (who is also filing for Australian trade mark protection), but the opposition is yet to be withdrawn.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?

Gracefully she slips out of her own name ...

Drapers reports today that Amanda Wakeley has stepped down from the label which will continue to trade under her own name. This story reminded Fashionista of the saga following the sale of another wedding dress designer's label: Elizabeth Emanuel.

Readers may recall that the designer famous for creating Princess Diana's wedding gown sold her business, together with a trade mark application for her name ELIZABETH EMANUEL. After falling out with the purchaser of her business, Ms Emanuel tried to oppose the registration for the ELIZABETH EMANUEL trade mark on the basis that it would deceive the public. The six year legal battle culminated in a referral to the ECJ which held that Ms Emanuel could not deprive the purchaser of a right it had legally acquired from her:

"A trade mark corresponding to the name of a designer and first manufacturer of the goods bearing that mark, may not , by reason of that particular feature alone, be refused registration on the ground that it would deceive the public..., in particular where the goodwill associated with that trade mark... has been assigned together with the business making the goods to which the mark relates".

Accordingly Ms Emanuel now trades under the brand "Art of Being" although her business' URL retains her name: http://www.elizabethemanuel.co.uk/. Fashionista hopes that as part of the sale, Ms Wakeley and investor-owner Jason Granite agreed the extent to which she can use her name for any future projects to avoid customer confusion and, most importantly, expensive legal bills.