Taylor v Killer Queen LLC & Ors

[2025] HCATrans 31

[2025] HCATrans 031

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S163 of 2024

B e t w e e n -

KATIE JANE TAYLOR

Applicant

and

KILLER QUEEN LLC

First Respondent

KATHERYN ELIZABETH HUDSON

Second Respondent

INC KITTY PURRY

Third Respondent

LLC PURRFECT VENTURES

Fourth Respondent

Application for special leave to appeal

GAGELER CJ
STEWARD J
JAGOT J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 11 APRIL 2025, AT 10.59 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 applicant, Ms Taylor.  (instructed by S&A Law)

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

GAGELER CJ:   Thank you, Mr Darke.  I should make it clear to the parties that the main concern of the Court in calling this oral hearing is with whether this is a suitable vehicle for the questions of law that have been identified in the application.

MR DIMITRIADIS:   Thank you, your Honour.  Your Honours – and I will take into account, of course, what your Honour the Chief Justice has just said – we do submit this case raises important questions of principle of construction of three provisions of the Trade Marks Act:  section 60, section 88(2)(c) and section 89 of the Act, which had no direct counterparts in the preceding trademarks legislation, being the 1955 Act, which was considered by the High Court in Campomar.

Before I turn to the three issues, might I say something briefly about the background in the primary judge’s reasons, including as relevant to the question of this being a suitable vehicle.  As your Honours will have seen, the applicant, Ms Taylor, is an Australia fashion designer whose trademark is “Katie Perry” – “Katie” spelt with an I-E – in relation to clothes.  There was no dispute, and it was clear before the primary judge that Ms Taylor was the owner of the trademark for trademark purposes, having adopted it independently and having been the first to use in relation to clothes.

In the proceedings below, the respondents sought cancellation of that trademark – relevantly, on the grounds in sections 60 and 88(2)(c) of the Act – based on the reputation of Ms Hudson, a United States‑based pop singer who performs under the stage name “Katy Perry” – “Katy” spelt with a Y.  Now, the primary judge, in our respectful submission, correctly made a number of findings and held that neither of those grounds for rectification applied to Ms Taylor’s trademark.  First, her Honour correctly drew the distinction, that section 60 requires, between reputation alone and reputation in another trademark, which must be the cause of the likely deception or confusion.

In that regard, her Honour found – and this was not disturbed on appeal – that as at the priority date of Ms Taylor’s trademark – that is, the date before the consideration of section 60 – Ms Hudson had not sold any clothes in Australia and had no reputation for clothes in Australia.  On her Honour’s approach, the possibility that a singer such as Ms Hudson might wish to sell merchandise such as clothes at some point in time in the future did not establish the requisite likelihood of deception or confusion because of the reputation of another trademark, as section 60 requires.

GAGELER CJ:   So, you say that the Full Court ignored that distinction or blurred it in some way.

MR DIMITRIADIS:   They certainly blurred it, your Honour.  It is fair to say the Full Court acknowledged that part of section 60 and that it was based on reputation in the trademark.  If I might go to the section 60 ground now, since your Honour has raised it ‑ ‑ ‑

STEWARD J:   Could I ask, for my part, it would be useful if you can identify in the reasons of the Full Court where, in each case, you say the error may be found and why it is an error.  So, section 60, 88(2)(c), section 89.

MR DIMITRIADIS:   Yes, I will do that.  I will do that, your Honour.

GAGELER CJ:   And we are, of course, broadly familiar with the facts and the procedural history.

MR DIMITRIADIS:   Of course, yes.  Thank you, your Honour.  I will not go through the other matters of background, then.  I will turn to the section 60 issue.  Your Honours are familiar with what the section requires.  That was dealt with by the Full Court, from paragraph 271 and following.  Can I make four points about the Full Court’s reasoning on this ground.

Firstly, we do submit that – as a matter of substance, having regard to the Full Court’s reasons – the Full Court erred by not giving proper regard to the distinction that section 60 draws between reputation generally and reputation in another trademark.  Their Honours said, at paragraph 290, that it would be:

artificial to excise and disaggregate the reputation of Katy Perry, the entertainer, from the reputation in the Katy Perry Mark for the purposes of the s 60 enquiry.

JAGOT J:   Is that not because of what they have said at 289?  Which was that her trademark was “Katy Perry” and that it followed, as a matter of fact, that:

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

Is that a factual finding, as opposed to a principled decision?

MR DIMITRIADIS:   We submit that it is incorrect both as a matter of fact and as a matter of principle, and their Honours do seem to be dealing with it as a matter of principle, in our respectful submission.  The statement that reputation in a name is of necessity reputation in a trademark does not give proper regard to the distinction that section 60 draws, and the reasoning or the statement of this Court in Self Care – that we have referred to in the application for special leave, at paragraph 19 – that an objection under section 60:

must be based on a trade mark having a reputation in Australia, not on reputation alone.

So, we respectfully submit that the last sentences of 289 and 290 reflect that error by the Full Court.

JAGOT J:   Does it also have to do with the nature of the goods or services?  You do seem to also raise that they are in completely different fields.

MR DIMITRIADIS:   Yes, we do raise that, and the primary judge made findings about that.  The Full Court’s reasoning on that issue is relatively brief, your Honour.  It is in the two paragraphs I have identified, as well as 291.  Their Honours did not disturb the primary judge’s finding that:

the Katy Perry Mark did not have a reputation in clothes –

but suggested her Honour:

ignored the common practice of pop stars to sell merchandise –

As to that practice, we respectfully submit the focus of the Full Court on that involved a blurring of the test in section 60, because by this stage their Honours were not considering a reputation in a trademark but rather were considering, in effect, the potential in future for the person who was the celebrity to extend into other areas by a process of brand extension.

STEWARD J:   Could I ask you another question.

MR DIMITRIADIS:   Yes, your Honour.

STEWARD J:   There seemed to be some reliance in the Full Court on the subjective knowledge of your client that at the date she made her application to register she had heard of the singer.

MR DIMITRIADIS:   Yes.

STEWARD J:   And she had some knowledge or expectation that singers of that popularity monetise their name reputation by, amongst other things, selling clothes.  Is any of that subjective evidence relevant to the test we are looking at here?

MR DIMITRIADIS:   Not to section 60, in our respectful submission, and their Honours refer to that particularly in relation to the section 89 discretion issue, as well.

STEWARD J:   Well, it might come in there.  I can see it is possibly relevant, but at the stage of sections 60 and 88(2)(c) ‑ ‑ ‑

MR DIMITRIADIS:   Not relevant, in our respectful submission.

STEWARD J:   These are objective tests.

MR DIMITRIADIS:   That is right.

STEWARD J:   Yes, I see.

MR DIMITRIADIS:   So, continuing with section 60, we do say consideration of the particular goods or services is important, and that the effect of the Full Court’s reasons was to, in effect, have regard to what might occur in the future by way of a celebrity such as Ms Hudson seeking to extend into other areas, rather than focusing on the reputation in the trademark which had actually been established – to the extent that it had – as at the priority date.  We made some other submissions in our application for special about the limited evidence ‑ ‑ ‑

STEWARD J:   Do you also submit that the Full Court’s reasoning implicitly uses hindsight in this area, to make good the breach of section 60?

MR DIMITRIADIS:   We do, respectfully, your Honour.  We say their Honour’s approach effectively reads into events, as at the priority date, knowledge of what has happened since that time.

STEWARD J:   Yes, I see.

MR DIMITRIADIS:   Ms Hudson happened to become very famous and happened to sell clothes at a later date, but that had not occurred as at the priority date.

JAGOT J:   Assuming the materiality of that alleged error, based on what was observed at paragraph 301 in the Full Court relating to:

the combined effect of the four errors –

of which the section 60 one you identified is one.

MR DIMITRIADIS:   Yes.

JAGOT J:   Given what is said at 302, if that alone is the successful ground of your appeal, is the inevitable result remitted to the Full Court?  What happens?

MR DIMITRIADIS:   We respectfully submit that there is another – at least one other – very important error that the Full Court fell into on one of the other reasons that their Honours gave, and I should mention that to your Honours.  It is the Full Court’s focus on deceptive similarity as a touchstone for assessing ‑ ‑ ‑

JAGOT J:   In these four errors?

MR DIMITRIADIS:   Yes, yes.

JAGOT J:   Yes, paragraph 292.

MR DIMITRIADIS:   That is right.  The Full Court focuses on deceptive similarity, but that overlooks the proposition, in our respectful submission, that deceptive similarity and section 60 involve quite different considerations, and that that was in fact examined in Self Care.  In Self Care, this Court held that:

reputation is irrelevant to the deceptive similarity –

Not relevant at all.  Whereas section 60 expressly requires a consideration of reputation in a mark.  Indeed, that must be the cause of the relevant deception or confusion.  So, they are quite different assessments.

The Full Court applies, in those paragraphs, a test of imperfect recollection, which is the tool used by the courts to gauge deceptive similarity in circumstances where one posits a person who may have encountered a trademark but not have a perfect recollection of it, and there would be confusion in those circumstances.  Section 60 is dealing with something quite different, where there must be a reputation.

So, by definition, the trademark to some extent is known – perhaps well‑known – to a particular person, and then the question is:  does that give rise to deception or confusion?  We submit that was also an error and, given those two significant errors – if this Court was persuaded that they were made – that the Court should re-evaluate the matters for itself.

GAGELER CJ:   So, that is section 60.  What about the other two provisions?

MR DIMITRIADIS:   Yes, and section – we have made some other submissions about it in writing, which I will not go into.  I will move on to section 88(2)(c), your Honours.

GAGELER CJ:   Yes.

MR DIMITRIADIS:   That is the second issue.  Now, this ground, unlike section 60, is to be assessed as at a later date – 2019 – as at the date of application for rectification.  It was not in dispute that, by that later date, Ms Hudson had a reputation in the trademark in relation to clothes.  Also, the evidence indicated, as your Honours will have seen from the primary judge’s reasons, that there was no evidence before the Court that there had been any actual confusion arising from Ms Taylor’s use of her mark over a period of more than a decade.

Against that background, your Honours, we make three points concerning section 88(2)(c).  The first one is the point of principle.  The Full Court declined to deal with this.  There was a submission put, in a notice by way of contention, by Ms Taylor that section 88(2)(c) requires consideration of the actual use that is made by the applicant of the registered owner of its trademark as at the date of the application for rectification.  That is what is comprehended by:

the circumstances applying at the time when the application for rectification is filed –

It is also consistent with the reference in section 88(2)(c) to:

the use:

being:

likely to deceive or cause confusion –

One can draw a contrast between that wording and the language of section 60, which is prospective.  It is a ground of opposition given force by section 88(1)(a) as a rectification ground, and it asks whether:

the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

GAGELER CJ:   So, your distinction here is between actual use and potential use.

MR DIMITRIADIS:   That is right, and the Full Court did not deal with that ground.  We submit there are compelling reasons, when one has regard to the statutory context and history, including ‑ ‑ ‑

GAGELER CJ:   You need not go through that.

MR DIMITRIADIS:   Thank you, your Honour.

GAGELER CJ:   We understand the point.  So, the main question is whether these issues properly arise or whether they are really factual questions.

MR DIMITRIADIS:   Yes, I understand, your Honour.

JAGOT J:   It goes to 339, as well, of the Full Court’s reasons:

whether the comparison be the actual –

That is the suitable vehicle issue.

MR DIMITRIADIS:   Yes, that is – and I was going to come to that now, your Honour.  We respectfully submit that that reasoning in 339, insofar as it is directed at actual use, is not supported by any detailed reasoning.  It is very difficult, we respectfully submit, to see how that could be correct.  That is, if the test required by section 88(2)(c) is a focus on the actual use that is made by the trademark owner as at the date of the application for rectification of the trademark, how could it be the case that – in this case, on the facts that were not in dispute – there was a relevant likelihood of deception or confusion?

GAGELER CJ:   Well, you say the facts – it depends on what you mean by the facts not being in dispute.

MR DIMITRIADIS:   Yes.  Well, what we mean is this, your Honours.  The evidence was that, over a period of more than a decade, Ms Taylor’s actual use of her trademark – having regard to the nature of that use and its extent, the actual use of her trademark, on the evidence, had not given rise to any deception or confusion, by reason of the reputation of Ms Hudson.  There was no evidence of that.  If the test is to focus on that state of affairs, those “circumstances” – that is what section 88(2)(c) refers to – there is no support for the Full Court’s assertion, in our respectful submission, in 339, that on the basis of actual use there was a requisite likelihood of deception or confusion.

STEWARD J:   You accept that 88(2)(c) is a forward‑looking test from the date of rectification?  It is likely, from that moment onwards.

MR DIMITRIADIS:   We would say, your Honour, it directs attention specifically to the circumstances applying as that date, and so our primary submission would be it is considering those circumstances.

STEWARD J:   So, the circumstances you consider most important are the historic use prior to – as a means of predicating what is likely to happen, in terms of confusion going forward.

MR DIMITRIADIS:   Yes, your Honour.  And, your Honours, just in relation to 339, which I was dealing with, that refers back to the section 60 reasoning, and we would make the same submissions about the Full Court’s errors on section 60 in relation to section 88(2)(c).

GAGELER CJ:   So, that brings us to the discretion?

MR DIMITRIADIS:   Yes, your Honour.  Now, your Honours would have seen that the Full Court treated as an act of the registered owner, which precluded the discretion arising – that the discretion did not arise – being the very act of Ms Taylor applying to register her trademark with knowledge of matters that ultimately gave rise to the grounds for rectification.  Your Honours will have seen that; it is in 317, in particular.

Now, we submit that that cannot be correct, for the reasons we have identified in the written submissions, in that if that act is a sufficient act – applying to register – then that is going to be present in every case where a ground for rectification that section 89 is directed to arises.  Nor can knowledge – Ms Taylor’s knowledge – of certain matters be relevant to that inquiry.  In this regard, your Honours, we note that the Full Court relied only on the “act” limb of section 89.

Their Honours did not rely on “fault”, and your Honours can see that from paragraph 312 of the Full Court’s reasons, combined with 316, where their Honours refer to “act or fault”, note that “act” goes beyond “fault” and expressly accept that Ms Taylor’s conduct was innocent.  Also 342, where their Honours expressly say that Ms Taylor’s conduct was:

not “blameworthy” –

which aligns with “fault”.  So, the Full Court dealt with “act”, yet they included within the act Ms Taylor’s subjective knowledge of certain matters, which, firstly, is not an act within the meaning of that term in section 88(2)(c) and, secondly, could not objectively affect the likelihood of the grounds for rectification arising; they either do or they do not.

Then, your Honours, in relation to section 88(2)(c), we also submit there is a further difficulty with the Full Court’s reasoning, and this appears in paragraph 312.  Their Honours appear to – by the way they have dealt with this – consider it sufficient that the act of the registered owner that is referred in section 89 merely “contributed to”, or “contributed towards”, the ground for rectification arising.

That is the main term their Honours use, and they do it again in paragraph 342 in relation to the exercise of discretion on the section 88(2)(c) ground.  That language – “contributed to” – suggests a lesser involvement of an act of the registered owner than the words of section 89 itself:

arisen through –

Has the ground:

arisen through any act or fault of the registered owner.

Which would make it harder for the threshold to be met.  Putting it another way, your Honours, on the Full Court’s approach, a trademark owner would apparently need to negative any contribution of its act towards a ground for rectification arising.

GAGELER CJ:   Again, you do not need to address us on the importance of the question.

MR DIMITRIADIS:   Yes.  Thank you, your Honour.

GAGELER CJ:   Is there any wrinkle in the facts here, or does it arise cleanly, in your submission?

MR DIMITRIADIS:   It does, your Honour, arise cleanly, in our respectful submission.  I will not spend any more time on that point.  Your Honours, the facts of this case, in our respectful submission, are a quintessential example of a case in which the discretion under section 89 is appropriate to be exercised.  It is hard to conceive of a situation where a trademark owner

could be less at fault, or less the cause, of a likelihood of deception or confusion arising, or less deserving of the exercise of the discretion, in our submission in this case.

In summary, Ms Taylor adopted her trademark innocently; had the misfortune of adopting a mark which, unknown to her at the time, was similar to that adopted by someone else, who later went on to become famous and thus apparently, according to the Full Court’s reasons, might have wanted to sell goods or services in other areas and who later did so in Australia in the face of Ms Taylor’s registration.  The respondents went ahead and infringed, notwithstanding their knowledge of Ms Taylor’s trademark, and the primary judge found that that gave rise to an entitlement to additional damages for flagrancy.

Additionally, your Honours, on the evidence – as I have submitted – so far as it was before the court, Ms Taylor had used her trademark for a period of more than a decade in a way that did not in fact give rise to any confusion, yet the Full Court’s reasoning is that the mark is to be cancelled because it is likely to do so, and that moreover is said to be due to an act of Ms Taylor.  We submit those facts do not support the exercise of the discretion.

Your Honours, we otherwise referred in the application for special leave, in the last few paragraphs, to some particular errors that we say arose in the Full Court’s exercise of discretion.  I say “exercise of discretion” because it was not the determinative aspect of their Honour’s reasons.  It was, in effect, obiter.  Thank you, your Honours.

GAGELER CJ:   Thank you, Mr Dimitriadis.  Mr Darke.

MR DARKE:   May it please the Court.  We say the questions of law sought to be agitated do not arise or, if they do arise, the proceeding is not an appropriate vehicle in which to consider them.  May I go first to proposed appeal ground 1, which, your Honours appreciate, seeks to challenge the two grounds of cancellation the Full Court found to be made out:  the section 60 ground and the section 88(2)(c) ground.

As to the section 60 ground, the focus of the applicant’s argument is on the Full Court’s findings on the reputation of the respondents’ Katy Perry mark.  The applicant’s challenge to those findings, in our respectful submission, raises no question of law.  Could I ask your Honours to go to paragraph 289 of the Full Court’s reasoning.  That paragraph, together with paragraph 290, simply records a factual finding that the reputation of the pop star under her stage name, which was in fact the trademark she used to distinguish her goods and services from those of others, was indistinguishable from the reputation of the trademark.  That emerges most clearly from the last sentence of paragraph 289.

The Full Court was entirely conscious of the correct inquiry under section 60.  Their Honours refer to it expressly at the end of the first sentence of paragraph 290, where they refer to:

the reputation in the Katy Perry Mark for the purposes of the s 60 enquiry.

It follows that the criticisms that are made of those paragraphs raise no question of law.  They raise only the application of well‑settled principles in relation to section 60 to the facts of this particular case.

GAGELER CJ:   But does it follow, from a finding like that, that if somebody is famous and chooses to trademark their name to sell merchandise, then the trademark acquires the reputation of the person?  Is that the way it goes?

MR DARKE:   I am not sure that would be so in every case, but on the facts of this case, that was the position.

STEWARD J:   Can I ask you, Mr Darke, that that finding at 289, was that reflected in findings of fact made by the primary judge, Justice Markovic?

MR DARKE:   It was certainly – the finding that Katy Perry was, by the priority date, an internationally famous pop star was a finding made by the primary judge, and ‑ ‑ ‑

STEWARD J:   There is a sort of feel about 289 that this is a finding made 10 years later.  It could be true, but perhaps not true.

MR DARKE:   No, the primary judge found that, as at the priority date, Katy Perry was an internationally famous pop star.  The reference that the Full Court gives for that finding is the primary judge paragraph 723(8).

STEWARD J:   So, is this a necessary factual inference from the fame of Ms Hudson?

MR DARKE:   Yes, it is, and the findings of the primary judge as accepted by the Full Court make clear that, at the priority date, Ms Hudson was under her Katy Perry stage name as a pop star for her music.

STEWARD J:   But not famous for using her name on clothing.

MR DARKE:   Not famous for having done that, but the Full Court recognised, correctly, that there was evidence of a common practice of what might be called grand extension by pop stars into clothing.

JAGOT J:   The issue with that is the logic underlying the last line, is that if you are sufficiently famous, the capacity is to monetise in all kinds of directions, not just clothing:  it is whiskey, wine, makeup ‑ ‑ ‑

STEWARD J:   Perfume.

JAGOT J:   ‑ ‑ ‑ everything.

MR DARKE:   But that why it is significant, that there was a common practice in relation to pop stars expanding and launching their own clothing lines, or at least selling clothes and merchandise of that kind at their concerts.

JAGOT J:   There is also – that is my point.  My point is that actual common practice could well be very much broader, and it becomes difficult to think of a commercial activity that would not be covered.  Surely, you can think of activities – I do not know, providing medical services and dental services and things.

Even then, Katy Perry Invisalign, or whatever it is, would not be beyond the realms of saying that there are just so many fields of commercial endeavour – sunglasses – it becomes quite hard.  It just happened to be clothing in this case.  It is the logic of the last sentence of 289, because if that is right, you are very likely to get evidence in any case of a famous person of capacity to monetise in all sorts of ways.  That would be common practice.

MR DARKE:   Your Honour, in my submission the last sentence of 289 is not drawing on what is said in 291.  What 291 is dealing with is a likelihood of deception and confusion arising from the reputation of the mark by reason of the common practice of grand extension, and it is a perfectly legitimate process of reasoning for the Full Court to adopt.  What they have is a trademark with a substantial reputation in Australia, and the reputation of the trademark, insofar as it has been used at that time, is a reputation in music and other services.

The question then is:  is the applicant’s mark – the use of that likely to deceive or cause confusion by reason of the reputation of the pop star’s trademark?  The answer to that question is:  yes, in circumstances where the public knows of this common practice of pop stars to use their brands on merchandise that is sold, and that ‑ ‑ ‑

JAGOT J:   I accept all of what you are saying, it is just that what follows from that is far more significant than seems to have been appreciated, because brand extension is – you know, it is not confined to clothing.

MR DARKE:   It is not confined to clothing, but on the evidence in this case, clothing was a major area of brand extension, and it was the only area of brand extension of which there was evidence.  What your Honour is raising with me is purely a question of fact.  It is not, in any sense, a question of law or principle.  In this case – I am sorry, your Honour.

GAGELER CJ:   It is a very interesting question, Mr Darke.

MR DARKE:   But, your Honour, if that were the test, I might have a deal with you, but it is not a question of law.

STEWARD J:   Can I just ask, the proposition that there was knowledge – objectively and subjectively – that an entertainer would monetise their name, it may be accepted, but as at the date of the application for the trademark by Ms Taylor, that ability to monetise would depend upon the continuing success of the entertainer announced in question.  How could that have been known that it would continue to be successful back then?

MR DARKE:   It was not known that it would continue to be successful, and that did not form any part of the Full Court’s reasoning.  The Full Court’s reasoning was conducted as at the priority date.

STEWARD J:   They do rely, though, upon the proposition that there is an objective reality – as Justice Jagot has observed – that successful entertainers will monetise.  But there is also, surely, another limb:  and that they will continue to be successful and thus monetise it on a continuing basis.

MR DARKE:   At this point in time, as at the priority date, on the primary judge’s findings, one had a pop who is internationally famous with a substantial reputation.  What the court has done is to say there is a common practice of such persons extending into clothing, and therefore the reputation of the pop star’s brand – the pop star’s trademark – is likely to mean that the use of the applicant’s name or trademark on clothes is deceiving or confusing, and that does not involve any assumption about what the future might hold in terms of the success of the pop star or otherwise.  It is based on the position of the pop star and the reputation of her trademark at that point in time at the priority date.

So, your Honours, there is no question of law here.  It is purely a question of fact.  On the facts, in my respectful submission, what the Full Court has found is correct.  When the pop star appeared at events and was referred to in the media as “Katy Perry”, that necessarily increased the public’s awareness of or the recognition of her, her music and her trademark as a sign used to distinguish her goods and services from those of others.  Perfectly appropriate for the court to reason as it did, and there is no error – either at the level of legal principle or at the level of fact – in what the court did, in my respectful submission.  Your Honours, as to the point about deceptive similarity, again, it was perfectly appropriate ‑ ‑ ‑

STEWARD J:   This is (2)(c)?

MR DARKE:   No, your Honour, I am still on the section 60 ground.  I think my learned friend said deceptive similarity was not relevant to that ground.  On the contrary, the near identity of the respondents’ trademark and the applicant’s increased the likelihood that, by reason of the reputation of the respondents’ trademark, the use of the applicant’s would be likely to “deceive or cause confusion”.  That being, as your Honours will readily appreciate, the same language as one finds in the definition of “deceptive similarity” in section 10 of the Trade Marks Act.

There was no error, on the part of the Full Court in having regard to the deceptive similarity of the trademark, in assessing whether or not the reputation of one was likely to give rise to the use of the other deceiving or causing confusion.  Your Honours, I will not go through the other criticisms our friends have made of the section 60 reasoning, because none of those other criticisms gives rise to any question of law and we have dealt with them in writing.

If your Honours are content, I will move to the section 88(2)(c) ground of opposition.  In our respectful submission, the present case is an inappropriate vehicle for considering the construction of 88(2)(c), which our friends seek to raise.  The Full Court held that 88(2)(c) was made out, whether actual or notional normal and fair use of the applicant’s mark were considered.  The applicant seeks to challenge that conclusion in relation to actual use on the basis that:

there was no evidence of actual confusion –

But the Full Court held that the lack of evidence of actual confusion was explicable due to the small scale of the applicant’s use, not the way in which the applicant’s mark had actually been used, such as the type of clothes on which it was used.  Your Honours will see that from paragraph 338 of the Full Court’s reasons.

JAGOT J:   Paragraph 338?

MR DARKE:   Paragraph 338, your Honour, yes.  Your Honours will see, in the second line, a reference there to the absence of confusion being:

explicable by the small scale of use of Ms Taylor’s Mark –

So, it was not the nature of the use, it was not the sorts of clothes it was used on, it was the extent of a use over that period that explained the absence of confusion.

GAGELER CJ:   Meaning that it is a relatively small business.  Is that what is being said?

MR DARKE:   Yes.  That was what explained the absence of confusion, yes.

STEWARD J:   Can I ask a basic question.  How did this issue arise before the primary judge?  Who relied upon it?

MR DARKE:   It was relied upon by the applicant to say there was no ‑ ‑ ‑

STEWARD J:   That your mark was the one that was going to deceive and cause confusion?

MR DARKE:   Not so much that.  It was relied upon by the applicant to say that the use of her mark was not likely to deceive or cause confusion because, looking at the last 10 years, it has not actually done that.  It has not actually caused any confusion, but that was based not on the nature of the use but purely on the limited extent of the use.

STEWARD J:   Can I ask a more basic question.  Does it not cut both ways?  Your mark might be likely to cause deception and confusion because of Ms Taylor’s mark and vice versa, in the category of class 25.

MR DARKE:   That may be so, your Honour.  In our respectful submission, we would say not so here because of my client’s reputation, but it is not really relevant to the 88(2)(c) ground.

STEWARD J:   Okay.

MR DARKE:   Your Honour wonders what difference does it make whether it is the extent or the nature?  As a matter of construction of section 88(2)(c), it is very hard to read the words that appear in that provision referring to the use of the trademark as being confined to the extent of the past use of the trademark.

Bearing in mind it is a prospective test, it is a forward‑looking test, it is asking about the likelihood of deception or confusion in the future.  One cannot rationally confine the analysis to the extent of use in the past, even if one could rationally confine it to the nature of the use.  We would say that is wrong, too, obviously.  We say the notional normal and fair use approach is correct, but even if one is applying an actual use test, there is nothing in the language of 88(2)(c) that suggests one approaches it on the basis of a limited past use when one is engaged in a prospective, forward‑looking test.

So, that aspect of the Full Court’s reasoning – it makes no difference whether one applies an actual or notional use test.  The additional reasons the Full Court gave for finding the primary judge in error on section 88(2)(c) are also unaffected by whether it considered actual or notional use.  Those were:  the extent of the reputation of Katy Perry the pop star and her trademark, and second, that the two marks were deceptively similar.

Your Honours will see the Full Court’s reasoning on those points at 332 and 333.  So, your Honours will see in 332, in the second sentence, the reference to:

the primary judge considered that the strength of Ms Hudson’s reputation and the reputation in the Katy Perry Mark was a “compelling reason why a person would not be caused to wonder whether –

there was a likelihood of deception or confusion.  Then if your Honours pass down to 333, your Honours will see reference to Singtel Optus and Delfi Chocolate, and the Full Court observes that in both of those cases:

the marks in suit were found to be not substantially identical or deceptively similar.

And then that is contrasted, if your Honours look at the last three lines of the paragraph:

with the case of deceptively similar marks.  In that case, before the reputation is factored in, by reason of the deceptive similarity alone, the marks are likely to deceive or cause confusion –

Then if your Honours drop down to 336, your Honours will see what it said that Singtel and Delfi Chocolate support, and then your Honours will see the last sentence.  I will not read it out, but all of that reasoning – the whole of it – is completely unaffected by whether one applies an actual or notional use test; actual or notional use has nothing to do with it.

So, the question of construction that our friends seek to raise would only arise if this Court found that the error in the Full Court’s conclusion was based on actual use as opposed to notional use, and that is unlikely, because the Full Court’s reasoning was unaffected by that distinction.

STEWARD J:   What did the Full Court say was the notional use of Ms Taylor’s mark?

MR DARKE:   The notional use was use across the full range of goods and services for which the mark is registered, not just the goods and services in respect of which the mark had been used in the past.

STEWARD J:   So, all clothing.

MR DARKE:   Yes, clothing of all kinds.  Exactly right, your Honour.

STEWARD J:   As distinct from the clothing that Ms Taylor sold.  Yes, I see.

MR DARKE:   And we say that is plainly the correct construction of 88(2)(c), but I am not going to take your Honours’ time up with that point at the present juncture, because I understand your Honours are really interested in whether this is an appropriate vehicle to consider that point.

GAGELER CJ:   Yes.

MR DARKE:   Your Honours, the other point I should make before moving on to the section 89 discretion is that our learned friends would need to succeed in challenging both of the grounds on which the mark was held to be liable for cancellation in order to succeed on appeal, leaving aside, of course, the challenge to the section 89 discretion.

As for the section 89 discretion, again, the question of whether or not that discretion was enlivened – which is the subject of proposed appeal ground 2 – raises no question of law.  If your Honours would go to paragraph 311 of the Full Court’s reasons, your Honours will see the submission that was put below:

Ms Taylor submits that the exercise of discretion under s 89 is intended to codify the previous law as to “blameworthy” conduct –

That was the submission put below.  That submission is expressly abandoned in paragraph 13 of our learned friend’s reply submissions.  Paragraph 312 sets out the construction of the threshold requirement under section 89, which the Full Court did adopt.  In particular, the last sentence.  In our respectful submission, there is absolutely no error in that statement of principle.  There is no difference between the language of:

contributed to the mark becoming liable for removal –

and the mark becoming so liable having arisen through the conduct of the registered owner.  They are both tests for causation, and that is the approach the Full Court took.  So, there is simply no error in the construction which the Full Court gave, in our respectful submission, to section 89 and the threshold requirement contained – yes.

STEWARD J:   Can I ask, if you are right, and if the Full Court is right, that the word “act” does not connote any kind of blameworthy conduct or turpitude of some kind, would there be any room for this discretion in practice to be satisfied, given that it assumes that you have breached 88(2)(a) and 88(2)(c)?

MR DARKE:   Your Honour, their Honours do not find ‑ ‑ ‑

STEWARD J:   I mean, your act of registering a trademark will be sufficient.

MR DARKE:   Your Honour, their Honours do not find that the section 89 threshold does not include blameworthy conduct.  They find it is broader than that.  So, it does include blameworthy conduct, but it just includes conduct that is not blameworthy, as well, if that conduct gave rise to the ground for cancellations being made out.

In this case, the Full Court was right to say that the applicant’s conduct had given rise to that.  Paragraph 317 sets out the Full Court’s reasoning on that basis, and what their Honours said was the reason that the applicant’s conduct had contributed to her mark becoming liable for removal was that she had applied for her mark:

with knowledge of Ms Hudson, her reputation, and her mark –

And what she admitted she knew was the common practice of pop stars lending:

their names (and trade marks) to be used in connection with clothes and sell merchandise at their concerts –

STEWARD J:   As you understand their reasoning here, is the physical act – the only physical act – the act of registration?  Or are there other physical acts that ‑ ‑ ‑

MR DARKE:   No, there are no other physical acts, but what the Full Court finds is that it is the act of registration with the knowledge that the applicant had that means that the ground of cancellation arose through her act.  It is not the act alone, it is the act with knowledge.

STEWARD J:   Why is that subjective knowledge relevant?

MR DARKE:   Well, the subjective knowledge is relevant because it is the subjective knowledge with which the applicant engaged in the very act in question.  I mean, what the Full Court has effectively found is that, so armed with that knowledge, the applicant was in a position to change course and to modify her application for registration.  For example, by making hers a composite mark with additional features such that it was not liable to be successfully opposed under section 60 and removed under section 88.  And they find that was a sufficient act doing that the ground of opposition was made out – or to have contributed to the ground of cancellation, I am sorry, having been made out.

Your Honours, just finally, an additional reason why appeal ground 2 does not raise any matter which this appeal is an appropriate vehicle for considering, is that the Full Court went on to exercise the discretion under section 89 on the assumption that they were wrong in respect of proposed appeal ground 2.  That is, in respect of the threshold requirement.  In doing that, the Full Court did not proceed on a wrong principle, it put aside its finding in respect of the threshold requirement, and it proceeded on the assumption that the discretion was not enlivened.

So, its finding as to the threshold requirement did not infect its exercise of discretion, and the reasons that the Full Court gave for exercising its discretion in the way that it did were, in our respectful submission, correct reasons and certainly reasons that do not give rise to any House v The King error, which is the kind of error that the applicant would need to show to be successful on proposed appeal ground 3.

If your Honours please, those are our submissions.

GAGELER CJ:   Thank you, Mr Darke.  The orders we will make are as follows:

1.The time for filing the application for special leave to appeal is extended.

2.Special leave to appeal is granted.

A one‑day case?  Yes.  Very well, thank you.  The Court will adjourn until 10.00 am on Tuesday, 6 May 2025 in Canberra.

AT 11.44 AM THE MATTER WAS CONCLUDED