Australian Full Federal Court Decision - Killer Queen, LLC v Taylor

Background

🎯 Precision in Trade Mark Specifications is Critical

The court ruled that “clothes” did not include “footwear” or “headgear” 👟🧢 under trade mark law, as these are not commonly considered part of “clothes” in everyday or trade usage.

This narrow scope reflected the applicant’s choice to list only “clothes” rather than broader class terms.

🔍 Lessons:

✅ Ensure trade mark applications clearly cover all relevant goods/services, using both dictionary definitions and industry norms.
⚠️ Be cautious—too narrow a scope can create gaps in protection.

🤝 Joint Tortfeasorship: Control and Involvement Matter

To be liable as a joint tortfeasor, there must be proof of common design or active cooperation—not just licensing.

Katy Perry’s company (Kitty Purry) and Ms. Perry herself were both liable due to their active roles in promoting and approving infringing products.

🔍 Lessons:

📋 Document and monitor the extent of involvement by licensees or third parties in using your trade mark.
🚨 Direct involvement (e.g. promotion, approvals) can result in legal exposure for both companies and their officers.

🆔 Defences: “Own Name” and “Good Faith” Use

The “own name” defence is only available to individuals, not companies or joint tortfeasors.

Ms. Perry succeeded in using this defence because her use was in good faith and preceded the other party’s business.

🔍 Lessons:

✅ Any personal name use must be genuine and in good faith, backed by evidence like timing and lack of confusion.

⚖️ Honest Concurrent Use and Trade Mark Strategy

Ms. Perry’s claim for “honest concurrent use” failed because she knew about the conflicting mark and there was an active dispute when she applied.

🔍 Lessons:

🚫 Don’t rely solely on honest concurrent use—especially if you’re aware of existing rights.
🕰️ Early, clear, and documented use with minimal confusion strengthens your position.

📉 Risk Management and Enforcement

Ms. Perry’s team took a “calculated risk” by continuing to sell merchandise under her name despite knowing of the conflicting trade mark.

🔍 Lessons:

📊 Assess risks and document potential issues before launching products.
📢 Share clear legal advice and risk mitigation strategies across teams.

🗂️ Rectification and Removal of Trade Marks

The court cancelled Ms. Taylor’s mark, correcting the register based on a proper interpretation of scope and case merits.

🔍 Lessons:

🧾 Keep strong documentation to challenge or defend marks.
🧠 Make informed decisions on filing, opposition, or cancellation, with a clear view of the legal landscape.