Taylor v Killer Queen LLC & Ors

[2025] HCATrans 61

[2025] HCATrans 061

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S49 of 2025

B e t w e e n -

KATIE JANE TAYLOR

Appellant

and

KILLER QUEEN LLC

First Respondent

KATHERYN ELIZABETH HUDSON

Second Respondent

KITTY PURRY INC

Third Respondent

PURRFECT VENTURES LLC

Fourth Respondent

GORDON A-CJ
STEWARD J
GLEESON J
JAGOT J
BEECH‑JONES J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON TUESDAY, 9 SEPTEMBER 2025, AT 10.00 AM

Copyright in the High Court of Australia

____________________

MR C. DIMITRIADIS, SC:   May it please the Court, I appear with my learned friend MR R.W. CLARK for the appellant.  (instructed by S&A Law)

MR M.J. DARKE, SC:   May it please the Court, I appear with my learned friends MS E. BATHURST and MR S.J. HALLAHAN for the respondents.  (instructed by Corrs Chambers Westgarth)

GORDON A‑CJ:   Thank you.

MR DIMITRIADIS:   Your Honours, this case raises important questions of principle concerning the construction and application of three provisions of the Trade Marks Act. Relevantly in the proceedings below, the respondents sought cancellation of Ms Taylor’s trade mark on two grounds, being those in section 60 and section 88(2)(c) of the Act.

In our submission, the primary judge correctly held that neither ground for rectification was made out in this case, and it followed that her Honour did not need to consider the application of the third provision in issue, being section 89 of the Act, which confers a discretion not to grant an application for rectification in certain circumstances. The Full Court, on the other hand, adopted a different approach.

Our respectful submission is that their Honours’ reasoning involved errors of principle in relation to each of the two grounds for rectification, which their Honours held were made out, as well as the discretion in section 89. In short, we submit that the effect of the Full Court’s approach is to up‑end the balance struck by these three provisions of the Act and others by giving an overly‑broad operation to the grounds for rectification in both section 60 and section 88(2)(c) and, at the same time, undermining the utility of the discretion conferred by section 89 not to cancel a trade mark if a ground is made out.

Your Honours, before coming to the issues, may I say something briefly about the statutory context. Sections 60, 88(2)(c) and 89 had no direct counterparts in the previous trade marks legislation, which was the Trade Marks Act 1955.  They arose from recommendations made in the report of a working party that preceded the current Act, which I will come to later.

In particular, sections 88(2)(c) and 89 stem from recommendations which were made in the context of what was then conflicting authority as to whether or not a ground of rectification in 28(a) of the 1955 Act had a continuing operation after the date of application, or the priority date, and after registration.

That conflicting authority had led to the development of a concept of blameworthy conduct in the cases as being relevant to the exercise of the court’s discretion not to cancel the trade mark under section 22 of the 1955 Act. Those debates were later resolved by this Court’s decision in Campomar, which held that section 28(a) of the 1955 Act did not have a continued operation.  I will come to those matters and Campomar in due course, but for present purposes we would emphasise two matters that arise out of that statutory context.

First, in Campomar, the Court explained by reference to the provisions of the 1955 Act that the trade marks legislation sanctions a degree of deception or confusion in various respects.  I will take your Honours to the paragraphs of Campomar in due course.  That was important to this Court’s decision in Campomar not to give section 28(a) of the 1955 Act a broader interpretation that would encompass a continuing operation after the date of application.

In our submission, a similar consideration applies under the current Act and weighs against an overly‑broad interpretation of the grounds which are now in issue. Secondly, it was clear under the 1955 Act that there was a general discretion, in section 22 of the 1955 Act, not to cancel a trade mark where a ground for rectification is made out, including the ground in section 28(a) of the 1955 Act. That discretion was generally expressed by the word “may” and was at large.

In fact, the High Court in Campomar exercised that discretion so as to allow one of the trade marks there in suit to remain on the register despite a ground under section 28(a) being made out. We submit that that context suggests a need for caution against adopting too broad a construction of the grounds now in issue under the current Act and at the same time too narrow a construction of the discretion which is conferred by section 89.

So, your Honours, might I move to the first of the three issues, which is the section 60 issue. Section 60 appears in Division 2 of Part 5 of the Act and sets out grounds for opposing the registration of a trade mark – so, prior to registration – but it is picked up, as your Honours know, by section 88 of the Act as a ground for rectification, among other grounds. Might I ask your Honours to look at section 60. It appears in the joint bundle of authorities, part A, tab ‑ ‑ ‑

GORDON A-CJ:   Most of us are working off a working copy of the legislation.

MR DIMITRIADIS:   Thank you. I will not give the references to that, then, your Honour. Thank you. So, section 60, as picked up by section 88(1)(a), provides for a ground for rectification where, as your Honours can see, two requirements are satisfied. Firstly:

another trade mark had, before the priority date for the registration of the –

challenged mark:

in respect of those goods or services –

those are the goods or services of the challenged mark:

acquired a reputation in Australia; and –

secondly:

because of the reputation of that other trade mark, the use of the –

challenged:

trade mark would be likely to deceive or cause confusion.

GORDON A-CJ:   So, in this case the question that arises is whether or not what we will call the singer’s mark had, before the priority date, acquired a reputation in Australia.

MR DIMITRIADIS:   That is so your Honour.  In particular ‑ ‑ ‑

GORDON A-CJ:   And then, the second question is, because of the reputation of that singer’s mark, the use of what we will call the designer’s mark will be likely to deceive or cause confusion.

MR DIMITRIADIS:   That is right, your Honour.

STEWARD J:   Is there not another element on your argument, which is it has to be a reputation in respect of goods and services of a particular type, which is the same as the goods and services of the registered mark.

MR DIMITRIADIS:   We would accept, your Honour, the reputation does not necessarily need to be of this in relation to the same goods and services as the registered mark, but it must be – because we are talking about a registration reputation in a trade mark – a reputation in relation to particular goods and services, and it is important to be precise about what that reputation is.  The primary judge made findings about that which are important for the assessment of this ground.

GORDON A-CJ:   In other words, when you are identifying what is the reputation in Australia of a singer’s mark, one is inquiring about what is that reputation of that mark in Australia.

MR DIMITRIADIS:   Yes, your Honour.

GLEESON J:   And what are the elements that one looks at to work out what is the reputation?

MR DIMITRIADIS:   Your Honour, reputation, as the section says, is reputation in a trade mark, and that is something, of course, that this Court emphasised in the Self Care Case which I am going to come to shortly. Section 17 of the Trade Marks Act provides that:

A trade mark is a sign used, or intended to be used, to distinguish
goods or services dealt with or provided in the course of trade –

As such, in our submission, reputation in a trade mark is acquired through and can only be acquired through use of the trade mark as a trade mark in relation to particular goods or services, and so, any reputation in a trade mark must necessarily relate to particular goods or services in respect of which it is being used as a trade mark.  That is our submission.

BEECH‑JONES J:   Just so I am clear, just in answer to Justice Steward’s question, for 60(a), do you say in this case “those goods or services” is class 25 clothes, so that it had to be established that Ms Hudson’s trade mark had a reputation in respect of clothes?

MR DIMITRIADIS:   Not quite, your Honour.  We do not say that it had to be shown that Ms Hudson’s trade mark had a reputation for clothes to make out part (a).  It had to be a reputation in a trade mark, and that must be a reputation referable to particular goods or services.  Of course, whether or not it was a reputation in relation to clothes would be highly significant to the resolution of this ground, and the primary judge found that there was no reputation in relation to clothes in Australia.

JAGOT J:   It is highly relevant to (b).

MR DIMITRIADIS:   That is right.  Yes, your Honour.

JAGOT J:   So, once you get – you could have a reputation in a trade mark other than for clothes satisfying (a), but the fact that it is not in respect of clothes would be very factually relevant to whether it “would be likely” or would not be likely in (b).

MR DIMITRIADIS:   Yes, your Honour.  We respectfully submit that.

STEWARD J:   I just want to understand, what do you say is the work that is being done in (a) in the phrase:

in respect of those goods or services –

What are they are requiring?

MR DIMITRIADIS:   Yes.  There is arguably an ambiguity in the section, but ‑ ‑ ‑

STEWARD J:   Which you are going to resolve now.

MR DIMITRIADIS:   ‑ ‑ ‑ I will explain how we say it is to be understood, your Honour.  Your Honour will see, reading the section in full, it refers to:

The registration of a trade mark in respect of particular goods or services may be opposed –

at the beginning.  Now, that is clearly referring to the goods or services in respect of which the trade mark being challenged is registered.

STEWARD J:   So here, class 25.

MR DIMITRIADIS:   Yes.  And the reference in (a) to:

in respect of those goods or services –

is referring back to those goods or services, and it is identifying the priority date of the challenged mark in respect of those goods or services.  One could read it differently, but the punctuation supports the first way that I put it to you, your Honour.

JAGOT J:   You are saying it is:

the priority date for the registration of the first‑mentioned trade mark –

MR DIMITRIADIS:   Yes.

JAGOT J:   So, the reputation is not a reputation in respect to those goods and services of the second mark.

MR DIMITRIADIS:   It would need not be.

JAGOT J:   It is any reputation in a trade mark – (a), the comma referring purely back to the first‑mentioned trade mark – the one that registration is sought.  But then you have to have (b).

MR DIMITRIADIS:   That is right, your Honour.  That is how we put it.

GORDON A-CJ: Is that because the purpose of section 60 is, in turning – this time, the point at which we are looking is the priority date, so in – not the facts of this case – one is looking at whether or not to register a mark, and one is looking to see whether or not it is likely that, by registering a mark, it is going to cause confusion.

So, that is why the reputation analysis in (a) is broader than it would otherwise be, because one is looking to see whether or not there is another mark – whether registered or not – that has a reputation in Australia.

MR DIMITRIADIS:   That is right, your Honour.  That is limb (a), and then limb (b), of course, is ‑ ‑ ‑

GORDON A-CJ:   And then limb (b) is a separate, second question, saying, having identified what the nature is of that reputation in Australia, the question that then arises is:  because of that reputation in Australia of that other mark – whether registered or not – the use of the registered mark would be likely to deceive.  So, one is undertaking this hypothetical inquiry about whether or not confusion exists or is likely to exist in (b).

MR DIMITRIADIS:   That is right, your Honour.

GORDON A-CJ:   And that confusion is at a level of likely that people would think that there was some connection between the two?

MR DIMITRIADIS:   Yes, your Honour.  So, the two matters I was going to refer to that are important in relation to this section have been covered in the exchanges with the Bench.  The first is there needs to be a reputation in a trade mark, which we submit requires attention to be given to the particular goods or services in respect of which that registration exists.  They need not be the same as the goods or services of the challenged mark, but that is important.

The second requirement, of course, is that – in (b) – the likelihood of deception or confusion must occur because of the reputation in the other trade mark. In that respect, as we have pointed out in our written submissions, the inquiry directed by (b) is different to the assessment of deceptive similarity under the Act, which requires one to ignore reputation as part of the inquiry. In fact, reputation must be the cause of the deception or confusion when one is considering section 60(b).

GLEESON J:   Can I just go back to – you were saying something about the elements of section 17, the definition of a trade mark.

MR DIMITRIADIS:   Yes, your Honour.

GLEESON J:   So, in relation to 60(a):

another trade mark had . . . acquired a reputation –

In this case, the relevant trade mark – the singer’s trade mark – is a sign, and a sign includes a name.  Is there anything more that needs to be satisfied for 60(a) in finding that the name had acquired a reputation in Australia apart from the name, whether used in writing or over the radio?

MR DIMITRIADIS: In our respectful submission, yes, your Honour, and that is that it must be reputation in that name as a trade mark, and the inherent nature of a trade mark, as set out in section 17 of the Act, is that it:

is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade –

So, it must be a reputation referable to particular goods or services in respect of which that sign has been used, in our respectful submission, as a trade mark.

STEWARD J:   So, you are looking for some kind of mercantile, commercial use of the name in Australia prior?

MR DIMITRIADIS:   Or a promotion, but yes, your Honour.

STEWARD J:   Or a promotion, yes.

MR DIMITRIADIS:   The ways in which one can establish reputation have been referred to in the cases included in Self Care:  sales, distribution, promotion – but referable to particular goods or services.

STEWARD J:   Yes.  Some goods or services of some kind.

MR DIMITRIADIS:   Yes, your Honour.

STEWARD J:   I see.  Thank you.

GORDON A‑CJ:   So, do you accept that the inquiry under (a) is a comparison between the reputation of what I will call the singer’s mark, based on actual use of that mark, against a notional normal and fair use of the designer’s mark?

MR DIMITRIADIS: For section 60, yes, we do.

GORDON A‑CJ: I am sorry, we are just talking about section 60 at the moment?

MR DIMITRIADIS:   Yes, your Honour, that is right.

GORDON A‑CJ:   So, that is the inquiry?

MR DIMITRIADIS:   That is right.  And when your Honour says the “actual use” of the singer’s mark, of course it is the reputation in the singer’s mark that results from that use.

GORDON A‑CJ:   I meant – sorry, you are right to correct me.

MR DIMITRIADIS:   Yes, your Honour.

JAGOT J:   There may be some reputations under (a) that are of such a nature, on the facts, that they would cover broader than the immediate goods and services in which a reputation has been applied, but that would be – you would, I assume, accept that, but that would be fact‑dependent.

MR DIMITRIADIS:   Yes.  Yes, your Honour, and it is important to have regard to that.

JAGOT J:   Because it could be an overwhelmingly well‑known name, you would say different facts from here.

MR DIMITRIADIS:   Yes, that is right, your Honour.  Your Honours, could I go at this point to Self Care, briefly, because there are a number of aspects of the Court’s reasons which are of assistance on this point. That is in the joint bundle, part C, tab 16. Could I ask your Honours to look first at paragraph 7 of the Court’s reasons, where the Court referred to section 17 of the Act that I have referred to, and the definition of:

A “trade mark” . . . “a sign used, or intended to be used, to distinguish” one trader’s goods or services from those of another –

And then, the third sentence:

The concept of “use” of and as a trade mark is central to the operation of the TM Act.

Then moving down to paragraph 9:

A person may apply for registration of a trade mark in respect of specific goods in one or more of the classes of goods specified in Sch 1 . . . if the person claims to be the owner of the trade mark, and the person is using or intends to use the trade mark in relation to those goods.  The particular goods in respect of which it is sought to register the trade mark must be specified in the application.

So, there is a particularity there involved in specifying particular goods or services. In paragraph 13, the Court referred to section 60:

Relevantly, registration of a trade mark in respect of particular goods . . . may be opposed under s 60 on the ground that another trade mark had, before the priority date for the registration of the applicant’s trade mark in respect of those goods, acquired a reputation in Australia and that, because of that reputation, the use of the applicant’s trade mark would be likely to deceive or cause confusion.

And then, passing over the next sentence:

Opposition must be based on a trade mark having a reputation in Australia, not on reputation alone. And, if the requisite reputation has been established, the likelihood of deception or confusion must also be demonstrated. Put in different terms, proof of reputation alone in a trade mark in Australia in respect of the same goods is not sufficient; s 60(b) requires the person opposing registration to show that use of the applicant’s trade mark would be likely to deceive or cause confusion.

So, the two limbs of the inquiry are both important.  Then, your Honours, could I go to paragraph 23, under the heading of “Sign used as a trade mark”, where the Court said:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website.  There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark.  A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

That is the concept of use as a trade mark.  Then, in paragraph 26, dealing with deceptive similarity and the inquiry that is required by that, section 10 of the Act is referred to and the test that is specified there, which depends on resemblance between two trade marks – the essential task is one of comparison.

GORDON A‑CJ:   We have no dispute about that here, though, have we, because it is common ground that both of the marks were deceptively similar?

MR DIMITRIADIS:   Yes.

GORDON A‑CJ:   That is, they were both two‑word words making aurally identical – and they differ only by one letter.

MR DIMITRIADIS: That is a different spelling, yes, your Honour. That is right. The point of us raising this is that the Full Court in its criticism of the primary judge’s approach criticised her Honour for undertaking a comparison between the two marks. We accept that the similarity or otherwise of the two marks is of course relevant to the section 60 inquiry.

The basis on which the Full Court criticised the primary judge for doing that was that there had been a finding – or, indeed, it was common ground – that the two marks were deceptively similar.  But deceptive similarity, as the Court goes on to explain here in Self Care, is a different form of inquiry to one that involves assessing reputation.  In fact, it requires one to ignore reputation.  That is the point of us raising this, your Honour.

GORDON A-CJ:   Thank you.

MR DIMITRIADIS:   Without spending a lot of time on it, that emerges from the Court’s reasons in paragraphs 28 and 29 in Self Care where the approach to assessing deceptive similarity is discussed in more detail, as is set out in the beginning of 28.  It:

is artificial – it is an objective question based on a construct.

That is described.  Then in 29, the test is one of “imperfect recollection” – that is in the third line of 29 – and there is a discussion of the artificiality of that approach, of assuming that consumers have an imperfect recollection of the registered mark, and conducting the inquiry on that basis and:

“[t]hat degree of artificiality can be justified on the ground that it is necessary in order to provide protection to the proprietor’s statutory monopoly to its full extent”.

As your Honours know, the Court goes on to find in terms that in conducting that inquiry of deceptive similarity, reputation – if any exists – in relation to the trade mark is to be ignored, is to be put aside.  That finding, in relation to reputation not being taken into account, appears in a number of paragraphs, particularly 36 – the last two sentences of 36:

Reputation should not be taken into account when assessing deceptive similarity under s 120(1).  That conclusion is compelled by the structure and purpose of, and the fundamental principles underpinning, the TM Act.

Then there is a more detailed discussion of that, including in paragraphs 41 and 42, drawing a distinction between an assessment based on reputation and an assessment of deceptive similarity.  Then in 46 – just to note – the Court refers to reputation being taken into account in specific circumstances under the Act – not deceptive similarity.

One of those, which has already been referred to as section 60, that is referred to again by the Court in paragraph 48. In that paragraph, the Court also refers to the manner in which it has been held that reputation has been proved in cases. That is, inferring it from sales, advertising and the like, as we would emphasise in relation to particular goods or services.

Your Honours, at that point, might I go to the primary judge’s reasons on the section 60 issue. Her Honour’s reasons, relevantly, start at paragraph 713. This is after her Honour’s discussion of the principles. That is at core of appeal book, page 244, at the bottom of the page. Your Honours will see that the primary judge said – after setting out an extract of the principles from the case – correctly the two matters that would need to be established in order to make out the ground:

first, that the Katy Perry Mark –

that is, Ms Hudson’s trade mark:

had acquired a reputation as a trade mark in Australia before the Priority Date . . . and secondly, that, because of the reputation . . . the use of the Applicant’s Mark would be likely to deceive or cause confusion.

Her Honour then went on to deal with those two matters in turn.  On the first matter, which her Honour dealt with from paragraph 714 and following, there was a debate before her Honour as to whether the evidence established reputation in Ms Hudson’s trade mark as a trade mark at all.

Her Honour held that it did, but not in relation to clothes, and that is not in dispute before your Honours.  Her Honour dealt with those issues from 714, and her key findings on this issue appear at 725 through to 727, that is core of appeal book 248 to 249.

Without going through her Honour’s findings in detail, the effect of them is that by the priority date of Ms Taylor’s trade mark, Ms Hudson had established a reputation in Australia in her trade mark as a trade mark in respect of music and entertainment services, but not in relation to clothes.  That becomes explicit in her Honour’s later reasoning, which I will come to shortly, at paragraphs 740 to 742.

It is notable, looking at her Honour’s findings here at this part of the reasons – that is, 725 to 727 – that the reputation that her Honour found had been acquired in Ms Hudson’s trade mark, as at the priority date of Ms Taylor’s trade mark, had arisen over a period of about three or four months before the priority date.  One can tell that from the list of dates in 723 – particularly subparagraph (3) and following – referring to Ms Hudson’s “One of the Boys” album and some tracks that were released from that, and looking at 724 and 725 through to 727, which relies on those events as giving rise to the reputation on Ms Hudson’s part in her name as a trade mark at that time.

GORDON A‑CJ:   Do you accept that 723 is an accurate description of that chronology?

MR DIMITRIADIS:   Yes, your Honour. 

GORDON A‑CJ:   Both in terms of content and time?

MR DIMITRIADIS:   I think that is right, your Honour.  If it is not, we will let your Honours know, but what we do emphasise is that it is really from 723(3) onwards that those findings – that is, the release of the “One of the Boys” album in June 2008 – gives rise to the primary judge’s findings of reputation.

Your Honours can see that, as I have said, from 725 to 727.  In 728, her Honour made certain findings which reflect on the significance or otherwise of the particular facts in section 723 that her Honour really referred to.  So, all of that needs to be taken into account.  Now, her Honour dealt with the second matter required to be ‑ ‑ ‑ 

GORDON A-CJ:   Can I just clarify that.  Paragraph 728 is rejecting submissions in part that your client had made.

MR DIMITRIADIS:   In part, that is right, your Honour.

GORDON A-CJ:   So, that is a response.

MR DIMITRIADIS:   Yes.

GORDON A-CJ:   But that does not detract – any of that does not detract, does it, or add to what is said in 723 about the reputation of the singer both nationally and internationally by around July 2008?

MR DIMITRIADIS: Not July 2008. I am not disputing that. It is really the earlier periods which are referred to in 728(1), Mr Jensen’s evidence was irrelevant; (2), an earlier single – so, (1) and (2) is accepting criticisms or limitations that we pointed out on the evidence, as is (4), in relation to the “Warped Tour”. The key point, your Honours, is that the reputation was recently acquired in the three or four months before the priority date. That is the effect of her Honour’s findings. The primary judge then dealt with the second matter required to be established under section 60.

GORDON A-CJ:   Sorry to be difficult about this ‑ ‑ ‑ 

MR DIMITRIADIS:   No, not at all, your Honour.

GORDON A-CJ:   ‑ ‑ ‑ is that the extent of the inquiry that is necessary?  I mean, does one not have to ask what is the reputation in Australia?

MR DIMITRIADIS:   Yes.

GORDON A-CJ:   So, is that what we take from 723 in its entirety?

MR DIMITRIADIS: We would emphasise – that is part of it, your Honour, but 725 through to 727 and 728, and her Honour comes back to consider this in conducting the inquiry under section 60(b) in some later paragraphs I am going to go to, which reflect on what her Honour made of this.

That second inquiry her Honour dealt with from paragraph 729 onwards, that is core appeal book 251, and her Honour recognised the nature of that inquiry in 729.  After discussing some principles, her Honour’s key findings on the issue appear from 740 and following, that is at core appeal book 254.

In 740, her Honour summarised her conclusion that she was not satisfied that the requisite likelihood of deception or confusion arose because of the reputation that she had found had been established in Ms Hudson’s trade mark, and her Honour then set out her reasons for that conclusion.  First, as your Honours can see in 741, her Honour correctly noted that the question:

is to be resolved as at the Priority Date.

That is the priority date of Ms Taylor’s trade mark, September 2008:

At that time the reputation in the Katy Perry Mark was in relation to entertainment and music.  True it is that there is evidence of Ms Hudson’s intention to use the Katy Perry Mark in relation to clothes.

As her Honour sets out.  And then, at the end of the paragraph:

But that does not alter the fact that Ms Hudson’s reputation in the Katy Perry Mark as at the Priority Date was limited in the way described.

We would interpolate, it did not extend to clothes.  At 742, her Honour said:

In my opinion, clothes are not related to entertainment and music as the respondents contend.  It may be that popular music stars such as Ms Hudson lend their names (and trade marks) to be used in connection with clothes and sell merchandise at their concerts but that does not make a reputation in one thing, i.e. entertainment and music, related to another, in this case clothes.  As a matter of fact, at the time Ms Hudson had not launched her clothing brand and the Katy Perry Mark had no reputation in clothing.

Those findings bring together the threads of what her Honour had earlier found.  Then, your Honours ‑ ‑ ‑

STEWARD J:   Could I just ask – that last finding, is that challenged in the Full Court, or is it simply the Full Court took a different view about what conclusion should arise under 60(b)?

MR DIMITRIADIS:   The effect of the Full Court’s reasons, in our submission, which of course I will come to, is that their Honours effectively challenged or seek to expand the scope of the reputation beyond clothes.  That is the effect of their Honour’s reasoning, which we respectfully submit is flawed and not open on the primary judge’s findings or the evidence.

GLEESON J:   Beyond clothes or beyond entertainment and music?

MR DIMITRIADIS:   I am sorry, your Honour?

GLEESON J:   You say that the Full Court expanded the reputation as found – to what, precisely?

MR DIMITRIADIS:   To clothes.

GLEESON J:   To clothes.

MR DIMITRIADIS:   That is the effect of their Honour’s reasons.

STEWARD J:   That could only be because of the acceptance that it was inherently likely that the singer would commercially exploit her name in clothes.

MR DIMITRIADIS:   That is the so‑called common practice of celebrities doing that.  That was the expressed basis for the Full Court’s reasoning.

STEWARD J:   Yes.  Can I ask you about that.  Were there findings of fact made by the primary judge that gave us more detail about that, or is it just at that level of generality?

MR DIMITRIADIS:   It is at that level of generality, and the Full Court – which I will come to, your Honour – refers to three matters as supporting that.  They are not findings of the primary judge as such, they are pieces of evidence.

STEWARD J:   Yes, I see.

MR DIMITRIADIS:   One is Ms Taylor’s acceptance in cross‑examination that that can occur at a general level by reference to some very famous celebrities who had done that.

STEWARD J:   I am not sure what the relevance of her subjective evidence on that might be.

MR DIMITRIADIS:   We make that submission, your Honour.  Secondly, there is a reference to an affidavit of Mr Jensen, who gave some very general evidence about it.  And thirdly, there is a hearsay statement in a newspaper article where someone refers to that occurring as a general proposition.

BEECH‑JONES J:   You have characterised those reasons as the Full Court expanding the reputation, but is not the other way of looking at what they have said is they have picked up what Justice Jagot put to you earlier, they have said:  here is this reputation, the notional and fair use of your client’s trade mark, and let us get right to a shirt that said “Katie Perry”, would be likely to deceive or cause confusion.  So, it is all about the inquiry, which does involve a degree of speculation, at 60(b), was it not?  Was that not really what they were saying?

MR DIMITRIADIS:   In my respectful submission, your Honour, that is not what they say.  That might be another way of approaching the matter, but it is not, we respectfully submit, the way in which the Full Court reasoned.

GORDON A‑CJ:   Can we ask a direct question.  If the question is posed in the way in which Justice Beech‑Jones put to you, that is the nature of the inquiry that should have been undertaken.

MR DIMITRIADIS:   And we would submit the answer to that, as the primary judge found, is that there is not the requisite likelihood of deception or confusion, and a number of ‑ ‑ ‑ 

GORDON A‑CJ:   So, we have notional – I mean, there is a number of concepts here.  Notional and fair use by your client includes labels on clothes and extends to names on fronts of shirts.

MR DIMITRIADIS:   Yes.

GORDON A‑CJ:   As I understand, that is your case.  So, the question is, as identified by the primary judge, and arguably identified by the Full Court if you read it in a particular way, is whether or not that notional and fair use by the designer is likely to cause confusion, given the accepted reputation of the singer in Australia at July 2008, or September – at the priority date, I meant to say.

MR DIMITRIADIS:   Yes, that is a way of framing the inquiry, your Honour, yes, we agree.  We do respectfully submit the Full Court did not approach it in that way and their Honours’ reasons involved error, and we submit the answer to that inquiry is as the primary judge answered it, for the reasons that her Honour is giving in this part of the judgment, that the requisite likelihood of deception or confusion did not arise on a proper assessment of the evidence in this case.

BEECH‑JONES J:   So, would it extend to this, then, that if your client was at a booth outside a Katy Perry concert, handing out or was selling shirts with the words “Katie Perry” on a T‑shirt – or is that getting too fact‑specific?

MR DIMITRIADIS:   That is too far, with respect, your Honour.

BEECH‑JONES J:   Yes, I understand.

MR DIMITRIADIS:   This concept of notional use – also called “normal and fair use” – it has limits.  Notional – the expression that is usually used in the cases is “normal and fair”.  “Fair” has a content to it.  In our respectful submission, notional use or normal and fair use of a trade mark would comprehend bona fide use by a trader seeking to build their own reputation or their own brand and avoid confusion with others in the market.  It would not comprehend use that would be knowingly misleading such as the example that your Honour Justice Beech‑Jones put to me.

GORDON A‑CJ:   But it would, as I understand your argument – just explain to me, maybe I have this wrong – the normal and fair use by a designer of a mark in relation to clothes would include labels with the name on it and, as I understand it, fronts of shirts with names on it.

MR DIMITRIADIS:   It could, yes.

GORDON A‑CJ:   So, if we can stand back, and we know since 2008 that there are a number of brands – named, marked things – that have their names on the – it is a way of using the mark.

MR DIMITRIADIS:   It is, your Honour.

GORDON A‑CJ:   So, that is a notional use, which is normal and fair, of a registered mark in relation to clothes.

MR DIMITRIADIS:   Yes.  My word of caution in answer to Justice Beech‑Jones’ observation was that one does not extend that to having the trade mark owner outside a Katy Perry concert with a both selling clothes in that environment.  That is not within the concept ‑ ‑ ‑

BEECH‑JONES J:   You do not have that detail.

MR DIMITRIADIS:   That is right, your Honour.

BEECH‑JONES J:   But it would extend to the sale of shirts with the name on it.

MR DIMITRIADIS:   Yes.

BEECH‑JONES J:   And if that happened to coincide with a Katy Perry tour, then so be it.

MR DIMITRIADIS:   So be it, your Honour.

GLEESON J:   Why is that – in this case, we have a label that does not have a large degree of exposure.  Is it obvious that normal use involves putting a name that does not already have a degree of celebrity on the front of a shirt as a use of a trade mark?

MR DIMITRIADIS:   Your Honour, the cases dealing with notional use, I think it is fair to say, do not fully explore the metes and bounds of the extent of that concept.  I put to your Honours what we say about it ‑ ‑ ‑

GLEESON J:   But you are prepared to go on the assumption, which might be unfavourable to you, that that might be a normal use.

MR DIMITRIADIS:   Yes, we say that would not undermine the result, for the reasons given by the primary judge.

STEWARD J:   Can I ask you a very basic question about this issue?

MR DIMITRIADIS:   Yes, of course, your Honour.

STEWARD J: We are looking at section 88(2)(a). Are we bound to exclude from any consideration what happened after registration? I mean, can we use hindsight at all, given that we are not a pure section 60 case, we are a section 60 case after the event?

MR DIMITRIADIS:   That is true.  We submit that the inquiry is conducted as at the priority date in the sense that the conclusion that is required is that there is the requisite likelihood of deception or confusion because of the reputation at the priority date.

STEWARD J:   I only ask you that because that because, I think, one of the important parts of your case is an absence of evidence of any actual confusion.

MR DIMITRIADIS:   Precisely, your Honour.  That is relevant as a piece of evidence which tends to show, because one can point to circumstances that in fact occurred after the priority date, where there was a long period of use.  And yes, Ms Taylor’s use was relatively small compared to Ms Hudson, but it was continuous use over a period of many years, including on a website where clothes were made available and sold in Australia and promoted online.

That is relevant as a piece of evidence that tends to suggest that the use that she was making – and we would extend that to that being notional and fair use, because she was using the mark in an ordinary way that a designer would on clothes – does not tend to give rise to the requisite likelihood of deception or confusion, because none emerged.

STEWARD J:   So, the short answer is we can take that into account?

MR DIMITRIADIS:   You can, as a piece of evidence.

STEWARD J:   As a piece of evidence.

MR DIMITRIADIS:   Yes.

GORDON A‑CJ:   Sorry, I do not quite understand that answer. If that is in relation to section 60, which is looking at the priority date ‑ ‑ ‑

MR DIMITRIADIS:   Yes.

GORDON A‑CJ: So, where you started in terms of the statutory structure was to identify – properly, I think – that section 60 is looking at, ordinarily, a situation where the mark has not been registered, so there can be no evidence of actual confusion, because we are looking at it at a hypothetical. And what section 88(2)(a) does, does it not, is it in effect imposes the same restrictions on that inquiry.

MR DIMITRIADIS:   It does.  I am not drawing a distinction because of the operation of section 88.  What I am submitting, your Honour, is that although the inquiry is conducted as at the priority date, evidence as to what occurred after the priority date when the marks were in fact used at the same time and no instances of confusion were established in the evidence, that is a piece of evidence from which one can draw an inference that the use as at the priority date was not likely to deceive or cause confusion.

STEWARD J:   You would say that it would be a very odd conclusion if you excluded evidence of actual use up to the date of the application for rectification?

MR DIMITRIADIS:   Yes.  We submit it is – and there are cases that have adopted this line of reasoning – only as a piece of evidence from which one can infer that the use of the two marks at the same time in the market is not likely to deceive or cause confusion because they did not in fact give rise to instances of confusion.

STEWARD J:   At some point, could you give us the references to those cases.

MR DIMITRIADIS:   We can turn that up, yes, your Honour.

STEWARD J:   Thank you.

MR DIMITRIADIS:   Her Honour certainly relies on that in her Honour’s reasoning.

STEWARD J:   Thank you.

JAGOT J:   Well, it is orthodox.

MR DIMITRIADIS:   Yes.

JAGOT J:   A form of reasoning that things that happen after, if they are the kind of things that could be in contemplation at the relevant time – in this case, the priority date – can rationally be used for that purpose.

MR DIMITRIADIS:   Yes, your Honour, we ‑ ‑ ‑ 

JAGOT J:   A process of inference about likelihoods at the relevant date, being the priority date.

MR DIMITRIADIS:   That is our submission, your Honour.  And indeed, in a timely way, the second point that the primary judge made, the second reason her Honour gave for not finding that the requisite likelihood of deception or confusion was made out, was precisely that.  That is, in paragraph 743 of her Honour’s reasons, there was:

no evidence of any confusion as at Priority Date or since that time.

There was discovery which was sought seeking to uncover that, no evidence was tendered, and:

Ms Taylor has continued to use the Applicant’s Mark . . . without a skerrick of evidence of any confusion on the part of any member of the public –

as her Honour said.

JAGOT J:   And she had in fact been using prior to the priority date.

MR DIMITRIADIS:   She had.

JAGOT J:   It is not a case of no use, registration; it is a case of use, then registration.

MR DIMITRIADIS:   In this particular case, that is right, your Honour.  And her Honour deals with that in some detail and addresses some submissions which were made by the respondents below, after 743.  Then the third matter referred to by her Honour is at paragraph 750.

Here, her Honour made it clear she was considering the notional use or “notional and fair use”, as her Honour put it, “of the Applicant’s Mark” that could be made across the scope of the registration.  However, as her Honour reasoned, and we respectfully submit this reasoning was correct, that factor did not lead to a finding of a likelihood of deception or confusion.

In part, that was because Ms Taylor had in fact sold clothes of a kind which were similar to those sold by touring pop stars such as Ms Hudson, such as T-shirts – her Honour deals with that in 750 and 752 – and the effect of that was to underscore the significance of the second matter that her Honour had referred to, being the absence of any evidence of confusion arising from the use Ms Taylor’s trade mark.

Now, in the context of that third reason, her Honour acknowledged, as was appropriate, the similarities between the two marks.  That is in paragraph 751.  And, as I pointed out earlier, the Full Court criticised her Honour for this – I will come to their Honours’ reasons on that front – on the basis of the common ground that the marks were deceptively similar.

We submit that criticism was not apt, and that her Honour was required to and appropriately did have regard to a comparison between the marks in the context of section 60, which is a different inquiry. We submit her Honour’s reasoning was apt. Her Honour noted that the marks:

are the same aurally, they differ, albeit slightly, visually –

but made a finding that:

The difference in spelling of “Katie” is immediately apparent –

Her Honour’s reference to:

The more conservative appearance of the Applicant’s Mark –

is a reference to that spelling, as the Full Court accepted.  There is another finding made by her Honour in this paragraph which is worth noting.  It is in the last two lines, where her Honour said:

the clothes offered for sale by the respondents rarely bear only the Katy Perry Mark on them.  Usually it is accompanied by graphics or photos of Ms Hudson.

Now, the Full Court also criticised her Honour for that observation on the basis that the respondent’s use after the priority date was not relevant to the inquiry.  Now, of course, that is true; in a direct sense, it is not relevant.

It is not the inquiry, but we submit the point made by her Honour is relevant indirectly as a piece of evidence, having regard to the argument that was being made by the respondents which was later accepted by the Full Court, and that was that it was enough – or this was the respondent’s case – that Ms Hudson had a reputation in relation to music or entertainment for the use of a similar name in relation to clothes to give rise to the requisite likelihood of deception or confusion.

Now, that argument being put, it raised a question as to how consumers might expect a celebrity such as Ms Hudson to use her name as a trade mark – if that is what she was going to do – in relation to clothes.  How would that in fact occur?  What would be the nature of the use by a celebrity?  This finding of the primary judge reflects on that by looking at what Ms Hudson actually did.  Usually in the way that one sees on celebrities’ merchandising where they do it, the name is accompanied by other indicia; graphics or photos, in this case of Ms Hudson.

That is relevant as a piece of evidence in informing the assessment of whether or not the use of a similar name by Ms Taylor on a piece of clothing without indicia of that kind is going to give rise to the requisite likelihood or confusion.  Using Katie Perry with an “i-e” alone, but without any graphics or photos of Ms Hudson, it is a different character of use.  We say that was a legitimate observation by the primary judge relevant to her Honour’s conclusions.

GORDON A-CJ:   There are two points being made in that paragraph.  One is the distinction between the spelling, which is existence of facts as at the time in you are undertaking the statutory comparison required.

MR DIMITRIADIS:   Yes.

GORDON A-CJ:   The last sentence is post‑priority date conduct.

MR DIMITRIADIS:   It is, but ‑ ‑ ‑

GORDON A-CJ:   So, you do not need it.

MR DIMITRIADIS:   Well, it is not necessary, but it is a relevant finding, and the evidence about that is relevant.  What it informs is that – one can infer from it – consumers understand that when a celebrity, such as a pop star like Ms Hudson, uses a name on clothes, it is usually going to be accompanied by graphics or photos or other indicia of the pop star in question:  perhaps an album, a song.

GLEESON J:   Is this an argument about the meaning of the reputation that has been acquired?

MR DIMITRIADIS:   This is going to inform the understanding of whether or not the reputation which was found, which was for entertainment and music, causes or gives rise to the likelihood of deception or confusion if the mark is used in relation to clothes.  It is informing that assessment.

BEECH-JONES J:   Is your submission, well, you cannot assume it, but if they do, they will put their face on it?

MR DIMITRIADIS:   Yes, because of course to assess whether or not Ms Taylor’s use is going to give rise to deception or confusion, one cannot rely on indicia such as the photographs or graphics referrable to Ms Hudson being on the shirt.  It is “Katie Perry” alone.

STEWARD J:   Is this similar to an argument that whilst it may have been expected that the singer would exploit her reputation in other products ‑ ‑ ‑

MR DIMITRIADIS:   If it was, yes.

STEWARD J:   ‑ ‑ ‑ it is not necessarily the case that the singer would have done so by using her name.

MR DIMITRIADIS:   That is one point, your Honour, which emerges from some of the evidence that the Full Court relies on, yes.

STEWARD J:   I mean, I understand, for example, there is a celebrated actor in Hollywood who does not use her name but uses the word “goop” to sell merchandise.

MR DIMITRIADIS:   Yes, your Honour, and one of the examples in evidence here was of a celebrity who used a different name for their brand ‑ ‑ ‑

STEWARD J:   So, going back to that finding about what is expected, was it expected that she would use her name, particularly, or expected she would use her reputation?

MR DIMITRIADIS:   Well, we would submit that there was no expectation in relation to her at all on the evidence, because the evidence is at such a level of generality that it does not support that finding.  Even if there was, it would not necessarily be that she would merchandise using her name.

Still, even if she did merchandise using her name, one would expect it usually to be accompanied by other indicia referable to her as a pop star or celebrity, such as photographs of her, graphics or album covers’ references to singles that she had released and the like.  All of that tends against a finding that there was a requisite likelihood of deception or confusion arising from only the use of Ms Taylor’s trade mark, without all of those other elements, on clothes.  That is what the primary judge found.

Your Honours, could I go to the Full Court’s reasons on this part of the case. That is in their Honour’s reasons from paragraph 271, that is core of appeal book 406. Now, in discussing section 60 and the approach to be applied, their Honours did acknowledge ‑ ‑ ‑

STEWARD J:   Sorry, what was the paragraph again?

MR DIMITRIADIS: Paragraph 271, your Honour. Their Honours acknowledged the requirements of section 60, and they deal with those in the following paragraphs, but our submission is that they misapplied the principles and those requirement in the way that they dealt with the section.

GLEESON J:   Both at the stage 1 and the stage 2 step?

MR DIMITRIADIS:   Yes, both, your Honour.  Yes.  Particularly – yes, both.

JAGOT J:   Can I just ask this.

MR DIMITRIADIS:   Yes, your Honour.

JAGOT J:   It is one thing to find error in a primary judge’s – for an appellate court to find error in a primary judge’s process of reasoning, this the Full Court seems to do for four reasons that take you up to paragraph 301.  Then, having found error, one assumes the Full Court goes on.  Am I right that the entirety of the Full Court’s reason, on the conclusion it reaches, is 302?

MR DIMITRIADIS:   Yes, it is, your Honour.  I think that is right.

JAGOT J:   Is part of that issue that it seems to be disconnected to the priority date, in any express way, at least.

MR DIMITRIADIS:   Yes, your Honour, we would respectfully submit that.

JAGOT J:   And you are saying that this has a series of assumptions – in fact, I am actually drawn out here – in it.

MR DIMITRIADIS:   Yes, your Honour.

JAGOT J:   It is assuming that Katy Perry would expand into clothing, it is assuming she would, if she did so, use the name “Katy Perry” as the trade mark to distinguish that clothing, and then it is assuming that – if she did use it – there would be no other indicia connecting the name and the clothing with the entertainment reputation.  At least those three things are in there.

MR DIMITRIADIS:   Yes, your Honour, and if I could ‑ ‑ ‑

JAGOT J:   And that is all to be foreseen at the – sorry, that is all part of what has been foreshadowed in that compressed paragraph as a form of reasoning tied to the priority date ‑ ‑ ‑

MR DIMITRIADIS:   I think that is fair, your Honour.  Yes.

JAGOT J:   ‑ ‑ ‑ from the reputation of Katy Perry in music and entertainment at that point as found.

MR DIMITRIADIS:   Yes, your Honour. 

GLEESON J:   Is that effectively because the reputation that has been identified in relation to the trade mark is referrable to the fact that she is a pop star? 

MR DIMITRIADIS:   I think that underlies their Honours’ statement in that paragraph that Justice Jagot referred to, yes, your Honour.  One can look at the four matters that their Honours identified as informing an assessment of error on the part of the primary judge and perhaps gain some understanding of what their Honours were considering.  We submit those four matters disclose error on the part of the Full Court, and if I could ‑ ‑ ‑

BEECH-JONES J:   Can I just stop you there.  You embrace those three assumptions.  The second was an assumption that she would use her name.

MR DIMITRIADIS:   Yes, your Honour.

BEECH-JONES J: Is not the unregistered trade mark, which is the whole postulate of section 60, the name “Katy Perry”?

MR DIMITRIADIS:   It is, your Honour, but ‑ ‑ ‑

BEECH-JONES J:   So, that is not an assumption, that is what the statute says:  the reputation in that mark as in the name.  So, it is not an assumption, it is the inquiry that you have to undertake, is it not? 

MR DIMITRIADIS:   It is an assumption in this sense, your Honour.  That is that the name is the trade mark, but the findings of the primary judge were the reputation in that trade mark was for entertainment and music services.  So, yes, she is using her name as a pop star for entertainment and music, the assumption that arises here is that if she was going to merchandise and sell clothes, she would use her name to do that rather than some other label such as “goop” or ‑ ‑ ‑

JAGOT J: I am saying as an assumption because section 60(a) is given, but when you come to (b), which is what this is what this all about, you have to say because of the reputation of that other trade mark, i.e. as found, Katy Perry in music and entertainment, that reputation:

the use –

of the one to be registered:

would be likely to deceive or cause confusion.

That has to then take you on to, okay, now we have to be in the realm of clothing, because nothing else is going to cause it.  So, that is why I framed it as an assumption.

MR DIMITRIADIS:   We would respectfully agree, your Honour.

JAGOT J:   So, there is definitely an expansion of the found reputation. 

MR DIMITRIADIS:   Yes, but that is the effect of it, your Honour.

JAGOT J:   I am not saying that that is wrong.  I am just saying that is rolled up in 302, accepting, as I of course do, that the earlier reasoning gives you clues as to what 302 means.  I am not suggesting against that.

MR DIMITRIADIS:   Yes, your Honour.  Your Honours, could I deal with the four ‑ ‑ ‑

GORDON A‑CJ:   There is two aspects to it, though, is there not?  That is, one is the fact that you have not got a reputation, in relation to the goods, the subject of either the application for the registered mark or the registered mark might be a factor against deception and confusion, but it is not a complete answer.

MR DIMITRIADIS:   Correct, your Honour.  I would have to accept that. 

GORDON A‑CJ:   So, we are still back in the 60(b) inquiry, notwithstanding that fact. 

MR DIMITRIADIS:   That is true.  Could I deal with the four matters that the Full Court identified as reflecting error on the primary judge’s part here, which lead up to the paragraph that we had been considering.  Those four matters – we emphasise their Honours said it was the four matters combined that led their Honours to intervene.  That is in 301.

If I could ask your Honours to go back to 288, where this part of their Honours’ reasons commences.  That is at core appeal book 409, where their Honours identify the four matters.  The first one is dealt with in 289, and this was that:

the primary judge unduly confined the reputation –

in the Katy Perry trade mark, and this is where we submit the Full Court was effectively seeking to expand the reputation beyond clothes – I am sorry, to clothes beyond music and entertainment.  Firstly, their Honours said that it was:

artificial to excise and disaggregate the reputation of Katy Perry, the entertainer, from the reputation in the Katy Perry Mark –

That is in 290.  We respectfully submit, as a matter of principle, that is wrong.  One needs to find reputation in a trade mark, not reputation in a celebrity.  One has to consider what goods or services the reputation relates to.

Secondly, your Honours, their Honours relied on the so‑called common practice of celebrities to seek to expand the reputation beyond music and entertainment to clothes, and one can see that that is what the Full Court was doing here, in particular from the first sentence of 289, where their Honours said:

the primary judge unduly confined the reputation of the Katy Perry Mark –

as well as the last sentence of 290:

To confine ‑ ‑ ‑ 

GORDON A‑CJ:   So, just pausing on 289, that last sentence:

The reputation in her name was of necessity a reputation in her name as a mark.

is incomplete, is it not, because it does not then say what the mark relates to, whether it is goods or services or both?

MR DIMITRIADIS:   Yes, it is incomplete.  Yes, your Honour.  We also submit it is wrong, because the reputation in a celebrity’s name is not, of necessity, reputation in it as a trade mark.  One has to consider the particular goods or services in relation to which the trade mark is being used.

GLEESON J:   Well, is it not correct in relation to her trade as a singer?

MR DIMITRIADIS:   Not at that level of abstraction with which the Full Court has put it in the last sentence of paragraph 289.  There were many references to Ms Hudson in the evidence doing different things, being seen as a celebrity, but that did not necessarily establish reputation on her part in relation to music and entertainment services.  One needs to consider those ‑ ‑ ‑ 

BEECH‑JONES J:   But was she not only seen as a celebrity insofar as she was a singer?

GORDON A‑CJ:   “International entertainer” is the way it is described in the third line.

MR DIMITRIADIS:   Yes, our point is that a use of the name “Katy Perry” in relation to Ms Hudson was not invariably used as a trade mark and did not invariably inform that there was a reputation in that name as a trade mark.

JAGOT J:   Do you mean at a level of principle or abstraction?

MR DIMITRIADIS:   Yes.

JAGOT J:   On evidence it might have been.

MR DIMITRIADIS:   Yes.

JAGOT J:   But, for example, Einstein – back in time, you would not – a world‑famous physicist, internationally famous, not every use of the name “Einstein” would be – or even perhaps any use of the name “Einstein” would be use as a trade mark, is your point.

MR DIMITRIADIS:   Yes, your Honour.

JAGOT J:   Certainly, some uses would follow here, music and – music, effectively pop music.

MR DIMITRIADIS:   That is right, your Honour, and the Court in Self Care did say one needs to have a reputation in trade mark, not reputation alone, that is the point.

GORDON A‑CJ:   I understand that principle.  Here, is there any international entertainer who uses a name as a mark – but not even this case – which does not use it as a trade mark, as a mark?  That is how they – that is what their reputation is.

MR DIMITRIADIS:   It depends on the particular use, your Honour – that is our answer to that.  Every use is not necessarily use as a trade mark.

GORDON A-CJ:   Not every use might be, but the name is the thing which is registered or sought to be registered.  Or, in this case, the name is the thing which is identified as the mark, because that is what the singer uses as the mark.

MR DIMITRIADIS:   Yes, your Honour.  But our point is at ‑ ‑ ‑

GORDON A-CJ:   There is no dispute about that.

MR DIMITRIADIS:   ‑ ‑ ‑ at a level of principle ‑ ‑ ‑

GORDON A-CJ:   I understand the principle.

MR DIMITRIADIS:   ‑ ‑ ‑ it is not correct.  And perhaps the more significant point here is this is not a basis for expanding the reputation beyond music and entertainment to clothes, which is what, in our respectful submission, the Full Court was seeking to do here.  I have referred to the first sentence of 289.  One can also see that from the first sentence of 291:

In concluding that the Katy Perry Mark did not have a reputation in clothes, the primary judge ignored the common practice of pop stars to sell merchandise including clothing at concerts and to launch their own clothing labels.

That reasoning, your Honours, we respectfully submit is incorrect.  It is seeking to substitute, for the sorts of evidence which can establish a reputation such as use of the mark in relation to particular goods or services, something else, which is what was said to be evidence of a common practice, at a level of generality, for pop stars to sell merchandise.

The effect of our friends’ case is that one cannot take account of the trade mark owner’s actual use but can take account of the circumstances of other use in the market, including, in this case, Ms Hudson’s use of her trade mark.  We respectfully submit the language of “the circumstances applying at the time” of the application for rectification clearly comprehends all circumstances, including the trade mark owner’s actual use at that time, and one can take account of that in the way that we submit the Full Court ought to have.

Either way, on the construction of section 88(2)(c), that supports the reached by the primary judge, albeit that her Honour was applying a notional use test, but emphasising the significance of the fact that, over a period of more than 10 years of continuous use by Ms Taylor of her trade mark – including online – to promote her business and clothes, there were no instances of confusion that were revealed in the evidence. The extrinsic material does not shed light one way or another on whether there was intended to be a test of notional use in section 88(2)(c), to respond to a point that our friends made.

On section 89, your Honours, the section that confers a discretion, it is important to bear in mind – as we have submitted – that under the 1955 Act there was a general discretion under section 22 which was applicable in relation to the grounds of opposition that were made available as grounds of rectification, so, section 28(a). Our friend’s submission is that because section 89 in the current Act applies not only to the continuing ground of rectification but the grounds of opposition that are given life as grounds of rectification, that supports a reading which there it is a difficult or not an easy threshold to satisfy to enliven the discretion.

That should not be accepted bearing in mind the context, which is that there was a discretion at large under the 1955 Act in relation to those very grounds, that is, the grounds that were given life – grounds of opposition that were given life as grounds for rectification under that Act.  That is the discretion that was exercised by the High Court in the Campomar Case.

Again, there is nothing in the extrinsic material to suggest that there was any intention to very significantly curtail the availability of a discretion under the current Act compared with the 1995 Act in relation to the grounds of opposition that are available as grounds of rectification or, indeed, in relation to the new continuing ground of rectification in 88(2)(c).

Indeed, just to give your Honours the reference, the working party report that both parties have referred to in their submissions – the reference is given in point 8(d) of our outline of oral propositions – that working party report recommended in different terms some provisions to go into the legislation.  They included a limitation.  Firstly, it recommended a continuing ground of rectification, it recommended that that be subject to a limitation that it would not apply if the trade mark owner established that the ground did not arise through its fault, and it recommended a discretion.

It did not make those recommendations in relation to what became section 88(2)(a), that is, the grounds of opposition that are given life as grounds for rectification. So, there is nothing in that extrinsic material to suggest that the discretion was intended to be very significantly curtailed in that respect. Your Honour, in relation to the applications, would your Honour permit me a couple more minutes to address that?

GORDON A‑CJ:   Of course.

MR DIMITRIADIS: Thank you. In relation to the application of the section 89 discretion, our friends, in the course of their submissions, referred to the various matters which have been proposed: giving rise to, or the grounds arising in part through, or those matters contributing to the grounds arising. That is far too a broad a reading of the language in section 89, which requires attention to be given to whether the ground has “arisen through” the conduct or “any act or fault” of the trade mark owner.

It is not enough that a particular conduct or act contributed to, in some way, or that the ground arose in part through – that is not the language used in section 89, it is a higher threshold. Indeed, if our friends relied on the act of applying for registration of a trade mark as a relevant act that can be taken into account, then in every case that contributes to the ground arising, because one has to have an application for registration of a trade mark before one can ultimately have a ground for rectification arising.

Your Honours, in relation to the three additional matters proposed as acts or faults on the part of Ms Hudson, I addressed those this morning.  Can I say something briefly in reply.  The first two were that Ms Taylor aligned herself with Ms Hudson and refused the coexistence agreement.  We do submit on proper analysis they cannot be said to have been acts through which the ground for rectification under 88(2)(c) arose.  Neither of them caused that ground to arise, for the reasons I addressed this morning.  The ground arose through the acts of the respondents in proceeding to sell clothes in the face of the registration.

In relation to the third additional matter that is referred to – that is, reliance on Ms Taylor not objecting or not taking action for a period of 10

years as a relevant act or fault – there are real difficulties in the respondents relying on this particular ground, this particular act or fault, given the way it has been put orally, which was to observe that there was a challenge to the primary judge’s findings on these issues, which were made in the context of the laches defence, that that was not addressed by the Full Court.

The respondents wish to point to the fact that they challenged those findings.  That plainly did require a notice of contention in this Court, because the primary judge’s findings are extant on those matters.  Those are the findings on the laches defence, paragraphs 819 to 826, and we submit that your Honours should not go behind them in the circumstances.  The Full Court did not interfere with them and observed that they were seeking to “re‑agitate” matters before the primary judge – that is in paragraphs 346 to 347.

Additionally, your Honours, there was evidence led about those matters, about Ms Taylor’s reasons for not taking action earlier, including her perception of the costs, and the explanation is referred to in the primary judge’s reasons that I gave your Honours the references to this morning, that she did not find out about litigation funding until later – 2018 – but the full evidence is not before your Honours on that.

Our friends say it is our onus – which, of course, as an act or fault, it is – but it was incumbent upon them, if they were going to seek to, in effect, challenge the primary judge’s findings made on these issues in the context of the laches defence, to put it in a notice of contention about it in this Court.  We otherwise rely on the submissions that we have made about the proper exercise of the discretion in this case, your Honours.  Thank you.

GORDON A-CJ:   Thank you.  The Court will reserve its decision in this matter and otherwise adjourn until 10.00 am tomorrow, 10 September.

AT 4.20 PM THE MATTER WAS ADJOURNED