Reputation, risk, and rigor: Honest concurrent use in a post-Killer Queen era

The long-running trade mark dispute between an Australian designer and American singer Katy Perry is being widely discussed amongst lawyers and media alike, with the Full Court of the Federal Court of Australia recently overturning the primary judgment in Taylor v Killer Queen, LLC (No 5) [2023] FCA 364. The case has redefined the application of the honest concurrent use defence in trade mark disputes, signalling a shift toward stricter judicial scrutiny.

When were the trade marks registered?

In September 2007, Australian fashion designer Katie Taylor (the designer) filed an Australian trade mark application for the “KATIE PERRY” logo in Class 42, covering clothing and fashion design (First Application) — ‘Katie Perry’ being her legal name at birth. Unfortunately, that application lapsed because the registration fee wasn’t paid on time. Accordingly, the designer reapplied for the word mark “KATIE PERRY” on 29 September 2008 (Second Application). The Second application was successful, proceeded to registration, but is, as at 13 January 2026, cancelled pending the decision of the High Court of Australia.

Around the same time as the Second Application was filed, the singer gained prominence with her single “I Kissed a Girl” and began selling “KATY PERRY” branded merchandise during her global tour in 2009 and from an online store. In May 2009, her management became aware of the designer’s trade mark and issued a cease and desist letter that also proposed coexistence on the register. The designer declined.

On 26 June 2009, the singer applied to register “KATY PERRY” in Classes 9 (CDs, musical recordings, etc.), 25 (clothing), and 41 (entertainment services) (Third Application). Due to the designer’s prior registration, the Third Application faced a citation objection under section 44 of the Trade Marks Act 1995 (Cth) (the Act). To secure registration, the singer removed Class 25 from the Third Application. Accordingly, it proceeded to registration and is still registered. However, the Third Application didn’t provide the singer with a defence to trade mark infringement in relation to the use of KATY PERRY on clothing.

The Katy/Katie trade mark dispute goes to Court

In the primary judgment (Taylor v Killer Queen, LLC (No 5) [2023] FCA 364), the Court found the singer liable for trade mark infringement relating to clothing sold in 2008 and 2009 during the singer’s tour. Bravado Merchandising, who produced and distributed the clothing, was held primarily liable, with Katy Perry and her entities (Killer Queen LLC and Kitty Purry Inc) found jointly liable as tortfeasors due to their active involvement.

However, in Killer Queen, LLC v Taylor [2024] FCAFC 64 (Killer Queen), the Full Court partially allowed an appeal brought by Katy Perry (the singer). The result was that Australian trademark number 1264761 owned by Katie Taylor (the designer), was cancelled.

Notwithstanding this early use, the Court found the designer’s registration invalid on two key grounds:

• first, that the designer was aware of the singer’s reputation when she sought registration of her mark in 2008; and
• second, that the risk of public confusion or deception had significantly increased (due to rising fame) by 2019, when the singer filed her crossclaim.

At present, this case is before the High Court of Australia and we await their judgement. Unless the fashion designer is successful in her appeal to the High Court, the singer and her affiliated companies will be permitted to sell “KATY PERRY” branded apparel in Australia, without fear of trade mark infringement.

Honest concurrent use

While we await judgement, an interesting aspect of the decision of the Full Court in Killer Queen (which is not being considered by the High Court), is the assessment of honest concurrent use as a defence.

Honest concurrent use refers to a situation where a brand owner (Party A) selects a trade mark in good faith and uses it extensively over time, alongside a conflicting mark used by another party (Party B), to demonstrate that both trade marks can operate in the marketplace without causing meaningful consumer confusion. Over time, the interpretation and application of honest concurrent use in trade mark law has evolved significantly.

The Full Court decision in Killer Queen provided clarification on the scope and limitations of the honest concurrent use defence under sections 44(3) and 122(1)(f) – (fa) of the Act. The Full Court affirmed that for the defence to be available, the alleged concurrent use must have commenced prior to the earliest date of infringing use that is being sued upon. The earliest date could be, for example, the priority date of the registered trade mark, or the date six years prior to the commencement of the proceedings (given the statute of limitations is 6 years for intellectual property law cases). Use initiated after that date, regardless of the user’s good faith, does not constitute honest concurrent use for the purposes of the Act, as the registration of a trade mark on the Australian Trade Marks Register is deemed to be within the knowledge of an ordinary business.

Honest concurrent use in Killer Queen

In Killer Queen, the designer commenced trade mark infringement proceedings against the singer in 2019. Due to the statute of limitations, this meant that the relevant date for assessing honest concurrent use for the purpose of the defence was in 2013, and not 2019 (nor 2008, being the priority date of the registered trade mark). Accordingly, if the defence of honest concurrent use were to apply, the singer would have needed to demonstrate that as at 2013:

• the singer had honestly adopted the trade mark;
• the singer had no intention of causing detriment to the designer; and
• there was no real or tangible danger of confusion in the marketplace.

In forming this view, the Full Court emphasised that the defence of honest concurrent use is not contingent solely on honest adoption of the trade mark. Rather, it must be assessed in light of the likelihood of deception or confusion in the marketplace, which may evolve over time. A bare assertion of honest belief does not meet the evidentiary threshold required to establish the defence. Instead, something more is required, such as a demonstrated intention not to cause detriment to the owner of the other trade mark, and/or a true belief that by using the trade mark it will not objectively result in a real or tangible danger of confusion.

Key takeaways

This stricter evidentiary approach reflects a broader trend toward protecting consumers and established brand rights. Courts now require more than just honest intent and coexistence; they demand proof of objective honesty and proactive brand clearance. This shift in the Court’s approach reflects a clear move away from treating honest concurrent use as a fallback for inadvertent brand overlap. Instead, it appears regarded as a narrowly defined and rigorously applied defence, subject to heightened judicial scrutiny and firmly aligned with the protection of established trade mark rights.

This decision underscores the need for applicants and respondents alike to consider not only the timing and honesty of use, but also the dynamic nature of brand recognition and market perception when asserting or defending trade mark rights.

In relation to the dynamics of the honest concurrent use defence, the decision should provide further impetus for business owners to register your trade mark. Using your own registered mark provides a defence against infringement proceedings as long as your registration is valid, whilst the availability of the honest and concurrent use defence may evaporate over time.

Contact our IP lawyers for advice

Understanding the nuances of trade mark registration and brand protection is vital for fashion designers, and all business owners, to safeguard their brand identity and intellectual property. Our IP lawyers at Macpherson Kelley have everything you need to break into the market in style.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.