FEDERAL COURT OF AUSTRALIA
Taylor v Killer Queen, LLC (No 5) [2023] FCA 364
File number: NSD 1774 of 2019 Judgment of: MARKOVIC J Date of judgment: 21 April 2023 Catchwords: TRADE MARKS – infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) – whether respondents are liable as joint tortfeasors in breach of s 120 of the Act – whether certain types of merchandise sold in Australia are clothes or goods of the same description as clothes – defence under the proviso in s 120(2) of the Act – whether any use of the infringing mark in relation to goods of the same description as clothes is unlikely to deceive or cause confusion – defence under s 122(1)(a) of the Act – whether the second respondent is entitled to use of the “own name” defence – whether use of the infringing mark was in good faith – defence under s 122(1)(fa) of the Act – whether respondents would obtain registration of the infringing mark for clothes if they were to apply for it – whether alleged joint tortfeasors are entitled to benefit of defences under s 122(1)(a) – claim under 88(1)(a) of the Act to rectify the Register of Trade Marks by cancelling the applicant’s mark – whether grounds in s 88(2)(a) of the Act, relying on ss 60, 42 and 43 of the Act, are established – whether ground in s 88(2)(c) of the Act is established – reputation of the infringing mark prior to the priority date of the applicant’s mark – whether use of the applicant’s mark in relation to clothes is contrary to law – whether the applicant’s mark is likely to deceive or cause confusion – whether the relief sought should be limited by reason of laches, acquiescence and delay – claim for additional damages
PRACTICE AND PROCEDURE – application for suppression order – whether order necessary to prevent prejudice to proper administration of justice – consideration of appropriate duration of order
Legislation: Competition and Consumer Act (Cth), Sch 2 (‘Australian Consumer Law’)
Evidence Act 1995 (Cth)
Federal Court of Australia Act 1976 (Cth)
Trade Marks Act 1955 (Cth) (repealed)
Trade Marks Act 1955-1958 (Cth) (repealed)
Trade Marks Act 1995 (Cth)
Trade Practices Act 1974 (Cth)
Federal Court Rules 2011 (Cth)
Trade Marks Regulations 1995 (Cth)
Trade Marks Act 1938 (UK)
Cases cited: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205; (2017) 124 IPR 264; [2017] FCAFC 56
Anheuser-Busch Inc v Budejovický Budvar, Národní Podnik (2002) 56 IPR 182; [2002] FCA 390
Apotex Pty Ltd v Les Laboratoires Servier (No 2) (2012) 293 ALR 272; [2012] FCA 748
Australian Co-operative Foods Ltd v Norco Co-operative Ltd (1999) 46 NSWLR 267
Australian Olympic Committee Inc v Big Fights Inc (1999) 46 IPR 53; [1999] FCA 1042
Bauer Consumer Media Ltd v Evergreen Television Pty Ltd (2019) 142 IPR 1; [2019] FCAFC 71
Baume & Co…
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- AGLC
- Taylor v Killer Queen, LLC (No 5) [2023] FCA 364
- Case
- [2023] FCA 364
- Decision Date
CaseChat Overview and Summary
The Court held that Killer Queen, LLC and its affiliates were liable for the infringement of Ms Taylor's registered trade mark, as they were joint tortfeasors in breach of section 120 of the Act. The Court found that some of the merchandise sold in Australia constituted clothes or goods of the same description as clothes. The Court further held that certain defences under sections 120(2) and 122(1) of the Trade Marks Act 1995 (Cth) were available to the respondents, but they did not succeed in establishing the "own name" defence. The Court found that the respondents would not obtain registration of the infringing mark for clothes if they were to apply for it. Regarding the cross-claim, the Court found that Ms Taylor was not entitled to the relief sought, as the grounds in sections 88(2)(a) and 88(2)(c) of the Trade Marks Act 1995 (Cth) were not established.
The Court further held that Ms Taylor was not entitled to injunctive relief, as her claim was barred by laches and acquiescence. The Court also found that Ms Taylor was not entitled to additional damages. Lastly, the Court granted the respondents' application for non-publication orders in relation to certain documents and information, considering it necessary to prevent prejudice to the proper administration of justice.
In conclusion, the Court found in favour of Ms Taylor on the infringement claim but rejected her cross-claim for rectification of the Register of Trade Marks. The Court also held that the respondents were entitled to certain defences under the Trade Marks Act 1995 (Cth) and granted non-publication orders for specific documents and information.
Orders
Orders of the court
1. The parties are to confer and within 14 days of the making of these Orders provide to the Associate to Markovic J proposed orders giving effect to these reasons.
2. Insofar as the parties are unable to agree to the terms of the proposed orders referred to in Order 1 above, including the appropriate order as to costs, the areas of disagreement should be set out in mark up in the draft to be provided.
3. Pursuant to s 37AF and s 37AG(1)(a) of the Federal Court of Australia Act 1976 (Cth), and on the ground that it is necessary to prevent prejudice to the proper administration of justice, the documents listed in Schedule 1 to these Orders are to be treated as confidential and are not to be disclosed to any person other than the parties to this proceeding, their legal representatives and to the Court for the purpose of this proceeding.
4. Order 3 above is to remain in place:
(a) in relation to the document at item 6 of Schedule 1 until 31 December 2023; and
(b) in relation to the balance of the documents itemised in Schedule 1 until 31 December 2026.
5. The proceeding be listed for case management hearing on 10 May 2023 at 9.30 am AEST.
6. The text of the reasons for judgment published today is to be published and disclosed only to the parties and their legal advisors.
7. By 4.00 pm AEST on 26 April 2023 the parties are to inform the Associate to Markovic J whether:
(a) the proposed redactions (shown in yellow highlight) to paragraphs [478], [533] and [536] of the reasons published in accordance with Order 6 above are to be maintained having regard to Orders 3 and 4 above; and
(b) they propose any further redactions as a result of Orders 3 and 4 above.
THE COURT NOTES THAT:
8. The reasons for judgment will be published on 27 April 2023 at midday AEST and any redactions made in the reasons are made in accordance with Orders 3 and 4 above.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Schedule 1
#
Document
Category
1
Agreement between Killer Queen LLC and Purrfect Ventures LLC dated 16 September 2016
1
2
Agreement between Purrfect Ventures LLC and GBG USA Inc dated 16 September 2016
1
3
Agreement between DMG and Second Respondent dated 22 October 2004
1
4
GBG e-commerce and URL rights acknowledgement, confirmation and consent letter dated 1 December 2017
1
5
Email between Epic Rights and DMG dated 10 March 2020
1
6
List of Katy Perry branded merchandise in Australia by Epic Rights
2
7
Confidential Exhibit SJ-6 – Membership Interest Purchase Agreement between GBG USA Inc and Hudson Fund, LLC
1
8
List of goods (Excel version included in electronic court book)
3
9
List of goods – additional goods
3
10
Agreement between Bravado International Group Merchandising Services, Inc. and H&M Hennes & Mauritz GBC AB
1
11
Operating Agreement of Purrfect Ventures LLC
1
12
Agreement between UMG Commercial Services, Inc dba Universal Music Group Brands and Killer Queen, LLC
1
TABLE OF CONTENTS
1 The facts
[8]
1.1 Ms Taylor – background and early career
[12]
1.2 Ms Hudson – background and early career
[20]
1.3 Killer Queen, Kitty Purry and Purrfect Ventures
[37]
1.4 Ms Taylor starts her own fashion label
[40]
1.5 Ms Taylor makes her first application for registration of a trade mark
[52]
1.6 Launching the Katie Perry label – October to November 2007
[55]
1.7 Ms Taylor establishes a production chain
[58]
1.8 Ms Hudson – 2007 to 2008
[60]
1.9 The development of KATY PERRY merchandise
[83]
1.9.1 Launch of the Katy Perry webstore
[95]
1.9.2 Initial arrangements with Bravado
[99]
1.10 Ms Hudson’s promotional tour – 2008
[101]
1.11 Filing of the application for registration of the Applicant’s Mark
[104]
1.12 The KATIE PERRY fashion label - 2008 to 2009
[110]
1.13 Ms Taylor first hears about Ms Hudson
[127]
1.14 Mr Jensen becomes aware of Ms Taylor’s application for the Applicant’s Mark
[129]
1.15 Correspondence between Ms Hudson and Ms Taylor
[130]
1.16 Events leading up to registration of the Applicant’s Mark
[134]
1.17 Registration of the Applicant’s Mark and Ms Taylor’s continued business operations
[184]
1.18 The progress of Ms Hudson’s TM Application
[194]
1.19 Ms Taylor and the KATIE PERRY label – 2010 to 2011
[199]
1.20 Ms Hudson’s career – 2009 to 2011
[201]
1.20.1 2009
[201]
1.20.2 2010
[203]
1.20.3 2011
[204]
1.21 Ms Taylor – 2012 to 2020
[209]
1.22 Ms Hudson – 2012 to 2020
[221]
1.22.1 2012
[221]
1.22.2 2013
[222]
1.22.3 2014-2015
[223]
1.22.4 2016
[230]
1.22.5 2017-2018
[235]
1.22.6 2019-2020
[244]
1.22.7 2021
[255]
1.23 Ms Taylor’s decision to commence this proceeding
[258]
2 The infringement claim
[267]
2.1 The pleaded case
[267]
2.2 Legislative framework
[270]
2.3 Legal principles
[274]
2.3.1 Use of a trade mark on a website
[283]
2.3.2 Joint tortfeasors
[285]
2.4 Clothes or goods of the same description as clothes
[288]
2.5 Ms Beale’s evidence
[292]
2.6 Mr Bush’s evidence
[295]
2.6.1 Clothes and footwear
[299]
2.6.2 The balance of the Disputed Categories
[309]
2.7 Clothes
[310]
2.7.1 Legal principles
[312]
2.7.2 Consideration
[318]
2.8 Goods of the same description as clothes
[348]
2.8.1 Footwear
[352]
2.8.2 Headwear or hats
[360]
2.8.3 Decorative masks and headgear
[364]
2.8.4 Novelty jewellery, wristbands, bracelets and necklaces
[365]
2.8.5 Handbags and purses, bags and backpacks
[371]
2.9 The Disputed Categories — conclusion
[376]
2.10 Ms Taylor’s claims of infringement
[378]
2.10.1 First channel – Ms Hudson’s concerts
[379]
2.10.1.1 The Prismatic Tour
[381]
2.10.1.1.1 The parties’ submissions
[382]
2.10.1.1.2 Consideration
[388]
2.10.1.2 The Witness Tour
[415]
2.10.1.2.1 The parties’ submissions
[416]
2.10.1.2.2 Consideration
[421]
2.10.2 Second channel – Pop-up stores
[436]
2.10.2.1 The parties’ submissions
[438]
2.10.2.2 Consideration
[442]
2.10.3 Third channel – Target
[450]
2.10.3.1 The parties’ submissions
[452]
2.10.3.2 Consideration
[457]
2.10.4 Fourth channel – Myer
[464]
2.10.4.1 The parties’ submissions
[466]
2.10.4.2 Consideration
[474]
2.10.5 Fifth channel – Bravado sales through other outlets
[481]
2.10.5.1 The parties’ submissions
[482]
2.10.5.2 Consideration
[487]
2.10.6 Sixth channel – websites
[508]
2.10.6.1 Bravado Website
[512]
2.10.6.2 katyperry.shop.musictoday.com/store
[518]
2.10.6.3 Epic Rights webstores
[525]
2.10.6.4 katyperrycollections.com and the Amazon Website
[540]
2.10.7 Seventh channel – other websites
[548]
2.10.7.1 shopstyle.com.au, www.ebay.com, gilt.com and amazon.com
[555]
2.10.7.1.1 gilt.com
[556]
2.10.7.1.2 shopstyle.com.au
[562]
2.10.7.1.3 amazon.com
[563]
2.10.7.1.4 www.ebay.com
[565]
2.10.7.2 ebay.com.au
[569]
2.10.7.3 Has there been direct infringement by Purrfect Ventures and/or Ms Hudson? Are Killer Queen and Purrfect ventures joint tortfeasors?
[573]
2.10.8 Eighth channel – Cotton On
[578]
2.10.9 Conclusion on Ms Taylor’s claims of infringement
[583]
2.11 Defences
[585]
2.11.1 The proviso in s 120(2) of the TM Act
[585]
2.11.1.1 Legal principles
[589]
2.11.1.2 The parties’ submissions
[592]
2.11.1.3 Consideration
[595]
2.11.2 Section 122(1)(a) of the TM Act – use of own name in good faith
[599]
2.11.2.1 Who has the benefit of the defence in s 122(1)(a) of the TM Act?
[600]
2.11.2.2 Section 122(1)(a) of the TM Act and Ms Hudson
[633]
2.11.2.2.1 “The person’s name”
[635]
2.11.2.2.2 Use in good faith
[646]
2.11.3 Section 122(1)(fa) of the TM Act – would the respondents obtain registration of the Katy Perry Mark for clothes?
[669]
2.11.3.1 The parties’ submissions
[671]
2.11.3.2 Consideration
[684]
2.11.4 Conclusion on availability of defences
[705]
3 The cross-claim
[706]
3.1 Legislative framework
[707]
3.2 Section 88(2)(a) of the TM Act
[710]
3.2.1 Opposition under s 60 of the TM Act
[711]
3.2.1.1 Legal principles
[712]
3.2.1.2 Had the Katy Perry Mark acquired a reputation in Australia before the Priority Date?
[714]
3.2.1.3 Is the use of the Applicant’s Mark likely to deceive or cause confusion?
[729]
3.2.1.3.1 Legal principles
[730]
3.2.1.3.2 The parties’ submissions
[732]
3.2.1.3.3 Consideration
[740]
3.2.1.3.4 Conclusion
[753]
3.2.2 Opposition under s 42 TM Act
[754]
3.2.3 Opposition under s 43 TM Act
[759]
3.2.3.1 Legal principles
[760]
3.2.3.2 The parties’ submissions
[766]
3.2.3.3 Consideration
[770]
3.3 Section 88(2)(c) of the TM Act
[774]
3.3.1 Legal principles
[775]
3.3.2 The parties’ submissions
[777]
3.3.3 Consideration
[783]
3.4 Conclusion – s 88 of the TM Act
[796]
4 Relief
[798]
4.1 Is Ms Taylor entitled to injunctive relief?
[802]
4.1.1 Laches
[814]
4.1.2 Acquiescence
[827]
4.1.3 Conclusion
[833]
4.2 Is Ms Taylor entitled to additional damages?
[834]
5 The respondents’ application for non-publication orders
[852]
5.1 Statutory framework and applicable principles
[853]
5.2 Category 1 – current commercial agreements and documents
[857]
5.3 Category 2 – merchandise sales sheets and figures
[862]
5.4 Category 3 – confidential lists of documents
[869]
6 Disposition
[874]
Background
Background to the litigation
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
On 21 August 2007 Ms Taylor registered an email address, katie.perry7@gmail.com. In her business, Ms Taylor used that email address as well as two emails associated with her domain name: info@katieperry.com.au and katie@katieperry.com.au.1.5 Ms Taylor makes her first application for registration of a trade mark On 29 August 2007 Ms Taylor attended an IP Australia business course at which she learnt about the process for, and importance of, applying for trade marks and designs for her business and about copyright. At about this time she also engaged Three Dimensional Communication to design business cards, letterhead and swing tags for her garments. On 13 September 2007 Ms Taylor applied to register a trade mark for a fancy logo based on the logo on her business card. The prominent feature of the logo was the words “KATIE PERRY” in cursive font. She applied for registration of the trade mark in class 42 for “clothing and fashion designing” (First KP Trade Mark). At the time Ms Taylor had not appreciated that goods and services belong to different classes. It was only in 2008 that she came to understand that in order to obtain better protection she should seek to register a mark in relation to clothes which were the type of goods she intended to sell. By letter dated 4 January 2008 IP Australia informed Ms Taylor that her trade mark application no. 1198609 for the First KP Trade Mark had cleared the examination stage of the registration process and that it would be advertised on 17 January 2008, which would commence the three month opposition period. The letter noted that if Ms Taylor paid the registration fee of $250 by 17 July 2008 and no one raised an objection within the three month opposition period, or sought an extension of time in which to do so, IP Australia would automatically register the First KP Trade Mark when that period expired. IP Australia also warned that if the registration fee was not paid by 17 July 2008, the trade mark application would lapse. 1.6 Launching the Katie Perry label – October to November 2007 In about October 2007 a friend of Ms Taylor’s, Cameron Paulinich, who was a gardener at Kambala School, a private girls school in Sydney, informed Ms Taylor that the students were hosting a fashion parade to raise money for charity and asked her if she wished to be involved. The event was titled “Catwalk for a Cure” and was to raise money for the National Breast Cancer Foundation. Ms Taylor’s name was put forward as a potential designer and she was selected to dress some of the students for the parade. By that time Ms Taylor had finalised several designs, but had not yet produced her garments at scale. She had only one or two of each style made up which she was using as samples to locate a suitable production house. Nonetheless Ms Taylor considered the Kambala fashion parade to be a great opportunity to promote the “KATIE PERRY” brand and her designs so she agreed to debut them at the event. On 31 October 2007, prior to the fashion parade, Ms Taylor sent a press release to Radio Northern Beaches and New Woman Magazine about the launch of her label which provided: