FEDERAL COURT OF AUSTRALIA

Killer Queen, LLC v Taylor [2024] FCAFC 149

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be allowed in part.

2.    The cross-appeal be allowed in part.

3.    Orders 1 to 5 made on 10 May 2023, and Order 1 made on 4 August 2023, in proceeding number NSD 1774 of 2019 (the proceeding below) be set aside.

4.    The originating application in the proceeding below be dismissed.

5.    The cross-claim in the proceeding below be allowed.

6.    The Register of Trade Marks be rectified by cancelling the registration of trade mark no. 1264671.

7.    The respondent pay the appellants’ costs of the appeal and cross-appeal.

8.    The question of the costs of the proceeding below be remitted to the primary judge for re-determination in light of the findings made on appeal.

9.    Order 6 of these orders be stayed until the later of:

(a)    the determination of any application for special leave to appeal to the High Court; and

(b)    if special leave to appeal is sought and granted, the determination of any appeal to the High Court.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

1.    INTRODUCTION

1    This is an appeal brought by the United States of America (US) music artist and performer known as Katy Perry, whose real name is Katheryn Hudson, and her associated companies Killer Queen, LLC, Kitty Purry, Inc and Purrfect Ventures, LLC (together the appellants), from the decision of the primary judge in Taylor v Killer Queen, LLC (No 5) [2023] FCA 364; 172 IPR 1 (PJ or Primary Judgment). In the primary judgment, Ms Hudson and Kitty Purry were found to have infringed the respondent’s trade mark no. 1264761 for the words KATIE PERRY, and were ordered to pay additional damages. Killer Queen and Purrfect Ventures were not found to be liable. The appellants were unsuccessful in their attempt to cancel the trade mark registration for KATIE PERRY.

2    The appellants appeal from the aspects of the decision that are adverse to their interests. In turn, the respondent, Katie Taylor, cross-appeals in relation to the primary judge’s findings on her claims that Killer Queen and Purrfect Ventures are liable as joint tortfeasors, the scope of the registered goods and the appellants’ defences to trade mark infringement.

3    The KATIE PERRY Mark (trade mark no. 1264761, which we also refer to as Ms Taylor’s Mark) is registered in class 25 and has a priority date of 29 September 2008. It is relevant to note that Ms Hudson sought registration for her mark, KATY PERRY (trade mark no. 1306481) (Katy Perry Mark), on 26 June 2009 in class 25, but subsequently withdrew that application, registering the mark only in classes 9 and 41.

4    The primary judge gave extensive reasons, not least because the parties chose to put every conceivably arguable factual and legal contention into issue. Their approach to the appeal was no different. It is convenient to identify the issues raised in the grounds of appeal, notice of contention, and cross-appeal by reference to the challenged findings of the primary judge.

5    In her reasons, the primary judge:

(1)    determined that the alleged acts of infringement do not fall within the scope of the registration of the KATIE PERRY Mark because the impugned trade mark use was not in respect of goods that fall within the meaning of the word “clothes”, with the exception of “party costumes” (PJ at [339]–[340], [346], [347]). In grounds 6 and 7 of her cross-appeal Ms Taylor challenges these findings in relation to footwear, headgear, caps, hats and headbands. We address this in section 3 below.

(2)    found that Ms Hudson infringed Ms Taylor’s Mark in five separate instances in various tweets, a Facebook post and a Facebook page event (PJ at [583(1)]) and that Kitty Purry was liable as a joint tortfeasor in respect of certain acts of primary infringement by Bravado (a term used by the primary judge at PJ [85] to refer to Bravado International Group Inc., Bravado International Group Merchandising Services, Inc (Bravado Merchandising) and any related entities) for promoting and selling clothes, or goods of the same description to clothes (PJ at [583(2)]). The primary judge rejected Ms Taylor’s claim that Killer Queen and Ms Hudson were liable for trade mark infringement as joint tortfeasors (PJ at [390]). In her cross-appeal, Ms Taylor contends that the primary judge erred in finding that Killer Queen and Ms Hudson, and Kitty Purry in relation to some trade channels, were not joint tortfeasors in relation to conduct of Bravado (grounds 1, 2 and 2A). Ms Taylor also contends that the primary judge erred in finding that none of the appellants was a joint tortfeasor in relation to the conduct of a company identified as Blackout Merch (ground 3) and that Killer Queen, Ms Hudson and Kitty Purry were not joint tortfeasors in relation to the conduct of Epic Rights LLC (grounds 4 and 5). We address these grounds in section 4 below.

(3)    found that a defence based on s 122(1)(a) of the Trade Marks Act 1995 (Cth) (good faith use of own name or name of predecessor in business) was not available to the appellants, with the exception of Ms Hudson, who could rely on the defence and was found to fall within its scope (PJ at [626], [633], [639], [648], [667], [705]). In ground 1 of the appeal, the appellants challenge the finding that the defence does not apply to Kitty Purry. In grounds 8–11 of the cross-appeal and ground 1 of her Notice of Contention Ms Taylor challenges the primary judge’s conclusions concerning this defence insofar as they concern Ms Hudson, Kitty Purry, Killer Queen and Purrfect Ventures. We address these matters in section 6 below.

(4)    rejected a defence based on s 122(1)(fa) of the Trade Marks Act (alleged infringer would obtain registration of a substantially identical or deceptively similar mark) on the basis that Ms Hudson would not have obtained registration of a trade mark for the words “KATY PERRY” in class 25, pursuant to s 44(3) of the Trade Marks Act for honest concurrent use (PJ at [699], [703]). The appellants challenge this conclusion in ground 2 of the appeal. At the conclusion of their oral submissions in reply, the appellants sought to amend ground 2 to plead an earlier date of first user. This was opposed by Ms Taylor. We address these matters in section 7 below.

(5)    rejected a contention advanced by the appellants in their cross-claim that Ms Taylor’s Mark was liable to be cancelled under s 60 of the Trade Marks Act (likelihood of deception or confusion because a prior trade mark has acquired a reputation in Australia) (PJ at [753]). The appellants challenge this conclusion in ground 3 of the appeal. Ms Taylor contends in para 2 of her Notice of Contention that, if this ground is upheld, the Court should decline to exercise its discretion under s 88(1)(a) or s 89(1) of the Trade Marks Act to cancel Ms Taylor’s Mark. We address these matters in section 9 below.

(6)    rejected a contention advanced by the appellants in their cross-claim that Ms Taylor’s Mark was liable to be cancelled under s 42 of the Trade Marks Act (trade mark use contrary to law, by reason of a breach of s 52 of the Trade Practices Act 1974 (Cth) or s 18 of the Australian Consumer Law (ACL) (Schedule 2 of the Competition and Consumer Act 2010 (Cth)) (PJ at [758]). This ground is not challenged on appeal.

(7)    rejected a contention advanced by the appellants in their cross-claim that Ms Taylor’s Mark was liable to be cancelled under s 43 (trade mark use likely to deceive or cause confusion because of a connotation) (PJ at [773]). This ground is not challenged on appeal.

(8)    found that Ms Taylor’s Mark was not liable to be cancelled under s 88(2)(c) (because, as at the date of the cross-claim, the use of Ms Taylor’s Mark was not likely to deceive or cause confusion) (PJ at [795]). The appellants challenge this conclusion in ground 4 of the appeal. Ms Taylor contends in paras 3 and 4 of her Notice of Contention that if this ground of appeal is upheld, the Court should decline to exercise its discretion under either s 88(1)(a) or s 89(1) of the Trade Marks Act to cancel Ms Taylor’s Mark. We address these matters in section 9 below.

(9)    rejected a contention advanced by the appellants that Ms Taylor was not entitled to relief because of laches (PJ at [823]). The appellants challenge this conclusion in ground 5 of the appeal. We address this ground in section 10 below.

(10)    determined that Ms Taylor was entitled to additional damages pursuant to s 126(2) of the Trade Marks Act (PJ at [851]). The appellants challenge this conclusion in ground 6 of the appeal. We address this ground in section 10 below.

(11)    ordered that Kitty Purry be permanently restrained from infringing the KATIE PERRY Mark including by engaging in manufacturing, promoting or selling any clothes bearing the Katy Perry Mark (orders of Markovic J, made 10 May 2023). The appellants challenge this order in ground 7 of the appeal. We address this ground in section 10 below.

6    We first address matters going to the liability of the appellants for infringement and joint tortfeasorship before turning to the statutory defences raised and then laches, damages and the form of orders. For the reasons set out in more detail below we have found that the primary judge erred in her conclusion that the KATIE PERRY Mark should remain on the Register of Trade Marks. The consequence is that grounds 3 and 4 of the appeal succeed and the decision below must be reversed.

2.    BACKGROUND FINDINGS OF THE PRIMARY JUDGE

7    The background of how Ms Taylor and Ms Hudson each came to be known by, and to use, the same name in their respective commercial activities, albeit with different spelling, and the events leading to the dispute the subject of the trial are comprehensively set out by the primary judge, commencing at [8] in the primary judgment. In this section we gratefully draw upon the primary judge’s thorough findings of fact.

2.1    Ms Taylor and her business

8    Ms Taylor was born Katie Jane Perry and has gone by three different names: Katie Perry, Katie Howell, and Katie Taylor. She worked in retail and in the fashion industry and started her own label in early 2007 initially using a different name for her label, before settling on the brand name “KATIE PERRY”.

9    On 2 May 2007, Ms Taylor registered a domain name for her business at www.katieperry.com.au. On 13 September 2007, she applied to register a trade mark for a fancy logo, the prominent feature of the logo was the words “KATIE PERRY” in cursive font. This application subsequently lapsed and on 29 September 2008, she applied for registration of the KATIE PERRY Mark.

10    Ms Taylor sold her products via an online store, through wholesalers and also from a showroom. The clothing Ms Taylor produced was “luxury loungewear”, including items such as jogger style pants and t-shirts.

2.2    Ms Hudson and her business

11    Evidence on behalf of the respondents was given by Steven Jensen, a partner of Direct Management Group Inc (DMG), a talent management agency which at all material times managed Ms Hudson’s career. Mr Jensen together with his two business partners, took steps to plan for and implement the development of Ms Hudson’s career as a musical artist, including her brand affiliations and touring. He kept in regular and frequent contact with Ms Hudson and kept her informed of the actions DMG took for her benefit. From about April 2007, when Ms Hudson changed her record company to Virgin, her musical career became particularly active, with Mr Jensen being closely involved in the promotion of Ms Hudson as a solo artist, her music and planning for commercial opportunities.

12    From at least early 2008, Mr Jensen considered that Australia was going to be an important market for Ms Hudson’s career. He and others involved in the development and management of her career planned for her to undertake a number of promotional and performance activities before a worldwide concert tour scheduled for 2009.

13    One of these performances was the “Warped Tour”, a US rock music tour that Ms Hudson was invited to perform at, which commenced on 30 June 2008 and ended on 17 August 2008. In anticipation of that tour, Mr Jensen pursued various merchandising opportunities and also caused an application to be filed for the “KATY PERRY” word mark in the US, including for apparel in class 25. DMG also arranged for a range of “Katy Perry” branded merchandise to be designed and produced for that tour. At each concert during the tour official merchandise was available for sale to fans.

14    By July 2008, in anticipation of her worldwide tour, Mr Jensen considered that there was a significant commercial opportunity for sales, including online sales, of “Katy Perry” branded merchandise. Mr Jensen commenced planning and carrying out various activities to take advantage of that opportunity in all countries where Ms Hudson was popular, including Australia. To that end, he engaged in discussions with Tom Donnell of Bravado International Group Inc, a merchandise company that operated in the music industry. Mr Jensen had worked with Bravado and Mr Donnell for 15 years and was aware that Bravado provided branded merchandise to distributors for resupply to retailers. Mr Jensen introduced Mr Donnell and his colleagues at Bravado to Ms Hudson, including those involved in the design of products in about 2008 or 2009. Ms Hudson accepted Mr Jensen’s recommendation that they work with Bravado in relation to physical retail distribution and also online sales. From August 2008, Mr Donnell provided Mr Jensen and others with proposed designs for sale and when they were approved, they were promoted.

15    The primary judge records that it was not in dispute that Ms Hudson was “closely involved in the selection and approval of designs and items of merchandise to be offered for sale generally and in particular geographic regions”.

16    On 24 September 2008, Mr Donnell informed Mr Jensen by email that the “Katy Perry web store” was live and ready to be linked to Ms Hudson’s homepage. Mr Jensen understood that this meant that “Katy Perry” branded merchandise, including clothing, would be advertised and available for purchase from Bravado either online or by telephone order, including in Australia. A few days after the webstore went live on the Bravado Website at katyperry.shop.bravadousa.com, it went live on Ms Hudson’s own website too.

17    In November 2008, Mr Donnell provided DMG with a confidential proposal for the distribution and sale worldwide for Ms Hudson’s upcoming world tour (2008 Proposal). No formal contract was entered into until 2011. However, the terms of that proposal were treated by DMG and Bravado as binding.

18    In about May 2009, Mr Jensen became aware of Ms Taylor’s application for registration of the KATIE PERRY Mark for “clothes” in Australia. He was concerned that Ms Taylor’s purpose was to obtain financial advantage from Ms Hudson, who at that time was scheduled to tour Australia as part of her worldwide tour, in August 2009. He authorised his US based lawyers to send a cease and desist letter to Ms Taylor in an attempt to stop the registration of the KATIE PERRY Mark.

19    The primary judge recites a subsequent email dated 16 June 2009 from Mr Jensen to Ms Hudson in which he informs her that Ms Taylor had traded under the name, Katie Perry, since 2007. He incorrectly informed Ms Hudson that no attempt had been made to keep Ms Taylor from trading under that name, refers to the tabloid newspapers picking up the story, and advises her that he will keep her posted. Ms Hudson responded on 17 June 2009 with comments suggestive that she had a distinct understanding of the dispute:

I say keep me outta it entirely... Make it less important but release something from management, pretty much stating the facts. Like from the opening of this email, beside the Katy, to the ‘story’ part. Those exact words are great. Don’t soften it up, don’t apologize, nothing. Let me know what’s going out before it does pls...

Stupid bitches.

I wouldn’t have even bothered with this mtv hadn’t picked up this silliness.

Dumb bitch! Rawr!

20    Ms Hudson’s lawyers were then authorised to attempt to resolve the matter on a mutually satisfactory co-existence arrangement.

21    On 26 June 2009, Ms Hudson lodged an application for registration of “KATY PERRY” as a trade mark in classes 9, 25 and 41. Ms Hudson also lodged an application with IP Australia for an extension of time within which to bring an opposition to Ms Taylor’s Mark. The application was listed for hearing in July 2009, but on 16 July 2009 that opposition was withdrawn before it was heard. The primary judge records that, at about that time, Mr Jensen had formed the view that Ms Hudson’s interests were best served by avoiding further publicity relating to Ms Taylor and that the appropriate way forward was not to appear at the hearing, recognising that Ms Taylor would be granted her trade mark application and could complain about trade mark infringement by Ms Hudson at a future point in time if the Katy Perry Mark was used on clothes. The primary judge also records that Mr Jensen was not concerned by this because he did not consider there to be any likelihood that members of the public would confuse clothing and other merchandise bearing the Katy Perry name on it with Ms Taylor’s clothes. However, Mr Jensen accepted that the strategy he adopted involved Ms Hudson taking a calculated risk of trade mark infringement.

22    From 29 June 2009 until August 2009, Ms Hudson and Ms Taylor engaged in negotiations via their lawyers in an attempt to make arrangements for their trade marks to co-exist. During that time, Mr Jensen kept Ms Hudson informed of his views of the matter and the actions that he proposed to take and Ms Hudson approved of those actions.

23    On 21 July 2009, Ms Taylor’s Mark was entered on the Register of Trade Marks.

24    Ms Hudson toured Australia in August 2009 as part of a world concert tour, “The Katy Perry: The Hello Katy Tour”. Mr Jensen was not aware of any contact on behalf of Ms Taylor with Ms Hudson’s lawyers at the time, which led him to believe that there was no real likelihood of subsequent contact. He expressed the opinion that based on his experience, it would have been detrimental to Ms Hudson’s success and popularity if she could not use her name Katy Perry in connection with branded clothing merchandise in a market as important to her music career as Australia.

2.3    Licensing arrangements and the infringing conduct

25    It is relevant to the consideration of the challenges to the primary judge’s findings of joint tortfeasorship in grounds 1 to 5 of Ms Taylor’s cross-appeal to set out in some detail the licensing arrangements affecting Ms Hudson’s interests.

26    Kitty Purry was incorporated on 23 April 2008 in California. Ms Hudson is its sole director, chief executive officer (CEO), secretary, chief financial officer (CFO) and shareholder.

27    Killer Queen was incorporated on 27 August 2009 in California with Ms Hudson as its sole shareholder and director.

28    Purrfect Ventures was incorporated on 7 September 2016 in Delaware. Its initial members were Killer Queen and GBG USA Inc.

29    In 2021 Hudson Fund, LLC, a company incorporated in 2016 with Ms Hudson as its sole member, acquired GBG’s shares in Purrfect Ventures.

30    The primary judge records that on 10 February 2011, following the release of Ms Hudson’s album “Teenage Dream” and in anticipation of “Katy Perry: The California Dreams Tour”, another world concert tour, Kitty Purry as grantor entered into an agreement with Bravado Merchandising in relation to the sale of “Katy Perry” branded merchandise, including during the California Dreams Tour, and the grant of licence rights in relation to the Katy Perry Mark (2011 Bravado Agreement). The 2011 Bravado Agreement was signed by Ms Hudson as an authorised representative of Kitty Purry. Merchandise bearing the Katy Perry Mark was sold by Bravado Merchandising on the Australian leg of the tour.

31    Mr Jensen discussed the terms of the 2011 Bravado Agreement with Ms Hudson and recommended that she and Kitty Purry enter into it. He believed that it “gave Ms Hudson a significant commercial opportunity in relation to Katy Perry branded merchandise to be offered in connection with her musical activities, including by its offer for sale and sale at concert venues and via e-commerce”.

32    On 16 December 2011, Ms Hudson and Killer Queen entered into a deed of assignment pursuant to which Ms Hudson assigned to Killer Queen all of her rights and interests to various identified trade marks.

33    Ms Hudson released a number of successful singles and engaged in numerous performances in 2012 and 2013.

34    The acts of infringement pleaded concern those that took place after 24 October 2013, being, as the primary judge records, the earliest that the limitation period permitted.

35    In February 2014, following the successful release of her fourth studio album “Prism”, and in anticipation of Ms Hudson’s global “Prismatic Tour”, Kitty Purry as grantor entered into an agreement with Bravado Merchandising in relation to the sale of “Katy Perry” branded merchandise including the grant of licence rights in relation to the Katy Perry Mark (2014 Bravado Agreement). It was signed by Ms Hudson as an authorised representative of Kitty Purry.

36    During the Prismatic Tour, merchandise bearing the Katy Perry Mark was sold at pop-up stores in Australia.

37    The primary judge refers to two agreements entered on 16 September 2016 which she defines as the Purrfect Ventures Agreements. In the first agreement, Killer Queen granted an exclusive, non-transferrable worldwide licence to Purrfect Ventures, with the right to sub-license and to use the “Katy Perry brand” in connection with the development, design, manufacture, promotion and sale of certain approved products through certain permitted channels of distribution. In the second agreement, Killer Queen, Purrfect Ventures and GBG entered into a contract for the global licencing of the “Katy Perry” brand as a fashion brand in relation to certain product categories including, relevantly, shoes (PJ at [231]).

38    On 1 December 2017, Ms Hudson, Killer Queen and Kitty Purry provided GBG with an acknowledgement, confirmation and consent letter relating to e-commerce and URL rights.

39    On 22 June 2017, Myer Pty Ltd and TEG Dainty Pty Ltd entered into a sponsorship agreement in relation to Ms Hudson’s forthcoming Witness Tour which included rights to promote a “Katy Perry” branded shoe range.

40    By a letter dated 11 October 2017 (October 2017 letter), Mr Donnell, who had left Bravado in 2016, proposed that his new company, Blackout Merch, be engaged for the purposes of merchandising goods. The primary judge records that Ms Hudson agreed to change merchandising arrangements from Bravado to Blackout Merch and refers to the evidence concerning the Blackout Merch arrangements as follows:

237    … As far as Mr Jensen can recall there was no formal contract between DMG and Blackout Merch in relation to KATY PERRY branded merchandise and, for the commercial merchandising activities referred to in the October 2017 Letter and in a subsequent email exchange between Messrs Donnell and Jensen between 9 and 11 April 2018, the parties conducted themselves generally in accordance with those documents (which I will refer to together as the Blackout Merch Agreement).

238    Mr Jensen considered that the proposed commercial merchandising arrangements with Blackout Merch presented Ms Hudson with a significant commercial opportunity in relation to merchandise to be offered to the public in connection with her music activities, both at concert venues and through e-commerce. Mr Jensen discussed the proposed arrangements and the main commercial terms with Ms Hudson. According to Mr Jensen, Ms Hudson knew Mr Donnell and had worked with him for many years. Mr Jensen recommended that she proceed with the commercial merchandising arrangements through Blackout Merch for her Witness Tour.

41    From September 2017 until August 2018, Ms Hudson embarked on the Witness Tour performing at 115 shows across 33 countries, including 14 shows in Australia at which “Katy Perry” branded merchandise was sold. Whilst on the Witness Tour, Ms Hudson appeared at Westfield shopping centres in Perth, Adelaide, Melbourne and Brisbane to promote Katy Perry branded footwear.

42    Since the Witness Tour, Epic Rights has undertaken commercial merchandising arrangements for Katy Perry branded merchandise, other than footwear and handbags which are covered by the Purrfect Ventures Agreements. The primary judge records in relation to Epic Rights:

257 … The relevant merchandise is that associated with Ms Hudson’s “Daisies” single, her “Smile” album and the Pokémon music video. Mr Jensen knew the principal of Epic Rights, Dell Furano, to be an experienced operator of commercial branded merchandise including for musical artists. In accordance with his general practice of communicating with Ms Hudson, Mr Jensen discussed the proposed arrangements with Epic Rights with Ms Hudson who accepted his recommendation that they proceed. The arrangements with Epic Rights are not the subject of a formal contract but are set out in an email dated 10 March 2020 (Epic Rights Email). There was evidence before me of online sales made by Epic Rights of KATY PERRY branded merchandise in Australia since the date of their appointment to 31 March 2021.

3.    THE “CLOTHES” ISSUE (Cross-appeal grounds 6, 7)

3.1    Introduction

43    Ms Taylor’s Mark is registered for “class 25: clothes”.

44    Grounds 6 and 7 of the cross-appeal contend that the primary judge erred in failing to find that footwear, headgear, caps, hats and headbands (which we refer to below as headgear and footwear) fall within that registration.

3.2    The primary judge’s findings on the goods of the “clothes” issue

45    The primary judge noted that the word “clothes” is defined in the Oxford English Dictionary as “[c]overing for the person; wearing apparel; dress, raiment, vesture” and in the Macquarie Dictionary as “garments for the body; articles of dress; wearing apparel” (PJ at [320]). The difficulty that arose was that these definitions leave it as ambiguous whether or not headgear and footwear fall within these definitions.

46    The appellants contended below that the primary judge could have regard to the fact that the registration is in class 25, this being a reference to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks which at the time drew a distinction between clothes on the one hand and footwear and headgear on the other. Their point was that, although the class heading for class 25 goods is “Clothing, footwear, headwear”, Ms Taylor had elected to register the KATIE PERRY Mark for “clothes” only. By reference to the class heading, Ms Taylor had thereby excluded footwear and headwear from the specification of the registered goods. Ms Taylor could not now contend, contrary to that election, that the specification of the KATIE PERRY Mark included footwear and headwear under the nomination of “Class 25: Clothes”. The primary judge relied on the decisions in Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239 (per Beach J) and Trident Seafoods Corporation v Trident Foods Pty Ltd [2018] FCA 1490; 137 IPR 65 (per Gleeson J) in support of the proposition that the Nice Classification could be used to provide context for any debate as to the scope of a particular registration. Ms Taylor submitted at trial that those decisions are plainly wrong, and that the preferable authority is Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816; AIPC ¶91–104 (per Wilcox J) where the Court eschewed reliance on class headings when construing the trade mark owner’s specification of the registered goods. The primary judge expressed attraction to the position propounded by Ms Taylor but was not convinced that Flexopack and Trident were wrong, and had regard to the matters relied upon by the appellants in concluding that “Class 25: Clothes” does not include headgear and footwear.

47    Separately the primary judge said:

340.    … in my opinion the ordinary meaning of clothes is garments that cover the body but not the feet (or the head). Clothes protect the body while shoes protect the feet. They serve different purposes, are made of different materials via different manufacturing processes and tend to be sold in different stores or different areas or departments of larger stores, such as department stores. That meaning is supported by the two dictionary definitions on which Ms Taylor relies (see [320] above), both of which refer to garments or coverings for the body or person suggesting that they are coverings for the torso and limbs, rather than the feet. Further, applying a common sense meaning, as urged by Ms Taylor, I would come to the same conclusion. That is the word “clothes” is not ordinarily employed to describe shoes or footwear and is inapt for that purpose. In my opinion, an interested trader wishing to gain an understanding of the Register would come to the same view as to the nature of the goods covered by the specification of the Applicant’s Mark.

48    In grounds 6 and 7 of her cross-appeal, Ms Taylor contends that the primary judge erred in both aspects of her reasoning.

3.3    Consideration

49    The question of whether or not headgear and footwear fall within “clothes” is a matter of construction, taking into account the ordinary meaning of the word “clothes” within the application of the broader statutory scheme for the registration of trade marks.

50    Section 19 of the Trade Marks Act provides that a trade mark may be registered in respect of goods and/or services and that the Trade Marks Regulations 1995 (Cth) may provide for the classes into which goods and services are to be divided for the purposes of the Trade Marks Act.

51    Regulation 3.1 of the Regulations provides that for the purposes of s 19(3), goods and services are divided into the classes of goods and services described in Schedule 1 and that each class of goods or services has a class number corresponding to that item. Schedule 1 is entitled “Classification of goods and services”. Class 25 reads “clothing, footwear, headwear”.

52    A trade mark, once registered, provides the registered owner with rights that include the exclusive rights to use and authorise other persons to use that mark in relation to the goods and/or services in respect of which it is registered: s 20(1). It also confers on the registered owner the right to obtain relief under the Trade Marks Act: s 20(2). These rights are taken to have accrued to the registered owner as from the date of registration of the trade mark: s 20(3). In applying for a trade mark a person must, within an application for a trade mark, specify in accordance with the Regulations, the goods and/or services in respect of which it is sought to register the mark: s 27(3)(b).

53    The Regulations provide in reg 4.4 that for the purposes of s 27(3)(b), the applicant must (amongst other things):

(a)    group the goods and/or services according to the appropriate classes described in Schedule 1;

(b)    nominate the class number that is appropriate to the goods or services in each group and list groups in order of their class numbers;

(c)    as far as practicable, specify the goods and/or services in terms appearing in any listing of goods and services that is published by the Registrar and made available for inspection by the public at the Trade Marks Office; and that

(d)    if any of the goods and/or services cannot be specified using terms referred to in that published listing, then the applicant must provide sufficient information to enable the Registrar to decide the classification of the goods and/or services.

54    It may be seen that it is the trade mark owner who must nominate the goods and/or services in respect of which their trade mark is registered. Accordingly, that person has agency in the appropriateness of the selection.

55    The legislative scheme of the Trade Marks Act reveals a concern that the Register of Trade Marks be maintained as an accurate record of marks which perform their statutory function, being to indicate the trade origins of the goods to which it is intended that they be applied: Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590 at [22] (per French CJ, Gummow, Heydon and Bell JJ).

56    The Trade Marks Act requires that the Register be maintained containing all particulars of registered trade marks: s 207(2). It must be available for inspection, either in person at the Trade Marks Office or online: Trade Marks Act s 209. The content of the Register is prima facie evidence of any particular or other matter entered on it: Trade Marks Act s 210(1).

57    It is within this legislative scheme that the task of construing the goods and/or services in respect of which a trade mark is registered must be undertaken. Without being exhaustive, in our view the following approach accords with the authorities and the legislative scheme:

(1)    Parliament can be taken to have intended the Register to speak for itself: Nikken Wellness at [44] (per Wilcox J). In most cases people who peruse an extract from the Register should be able to understand what it says without being obliged to make inquiries about the business history or previous conduct of the registered owner of the mark: Nikken Wellness at [44] (per Wilcox J); Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44; 407 ALR 473 (Energy Beverages FC) at [132] (per Yates, Stewart and Rofe JJ); Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; 277 CLR 186 at [39] (per the Court).

(2)    The Register is a public document that defines the scope of a statutory monopoly. It should be taken to be expressed in a manner that is not reasonably capable of being misunderstood: see Décor Corporation v Dart Industries [1988] FCA 682; 13 IPR 385 at 400 (per Sheppard J). In this respect it is analogous to the definition of an invention claimed in a patent.

(3)    It may be taken, in construing the specification of goods or services, that it is a considered statement by the applicant which should be read as a whole to determine its meaning and effect: Reliance Water Controls Ltd v Altecnic Ltd [2001] EWCA Civ 1928; 12 WLUK 261 at [42] (per Mummery LJ, Kennedy and Sedley LJJ agreeing); Décor at 400 (per Sheppard J); see also Burrell R and Handler M, Australian Trade Mark Law, (3rd ed, LexisNexis Butterworths, 2024) at [6.30].

(4)    The Register should be understood through the eyes of persons interested to know the scope of the monopoly. This is likely to include other traders who may be interested in using or licensing the trade mark (Woolworths Limited v BP plc (No 2) [2006] FCAFC 132; 154 FCR 97 at [58] (per Heerey, Allsop and Young JJ)) and also persons interested in dealing with the trade mark, for instance by seeking a licence or taking an assignment of it. Generally, such persons can be expected to be familiar with the language and expressions used in the trade concerned.

(5)    Unless it is shown that the words used to define the goods or services have a particular or special meaning to those to whom they are taken to be addressed, they should be construed as ordinary English words, the definition of which will be a matter for the Court. On occasion, the construction of the words used may be the subject of evidence: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205 at [185]–[195] (per Greenwood, Besanko and Katzmann JJ); Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 (Bauer Consumer Media FC) (per Burley J at [244], Greenwood J agreeing at [18]).

(6)    The classification of goods and services according to classes is primarily a matter of convenience in administration (for example, to facilitate searches). The nomination of a class for particular goods is not decisive as to the scope of a given registration: Re Australian Wine Importers Ltd (1889) 41 Ch D 278 at 291 (per Lindley LJ); Reckitt & Coleman (Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84 at 90 (per Latham CJ); Nikken Wellness at [43]–[44] (per Wilcox J); Energy Beverages FC at [132] (per Yates, Stewart and Rofe JJ). It would appear that, in Flexopack and Trident, the Court was not taken to Australian Wine Importers or Reckitt & Coleman. Both cases were also decided before Energy Beverages FC.

58    Turning to the facts of the present case, we are not satisfied that Ms Taylor has demonstrated error on the part of the primary judge in her finding in PJ at [340], quoted above.

59    As Ms Taylor accepted in argument, at least one ordinary meaning of “clothes” is garments covering parts of the body (and not the head or feet). She contends, however, that other meanings refer more compendiously to items covering the whole of the body: a person commanded to “take off your clothes” would, she submits, naturally assume that this included all items of clothing. We do not necessarily accept that, absent more context, such a command is unequivocal. However, in our view, any ambiguity arising would not be resolved in favour of the trade mark owner. It is the obligation of the trade mark owner clearly to specify the goods in respect of which the mark is to be registered and thereby define the scope of the monopoly they claim. Where there exists a penumbra of uncertainty in the scope of the registration, this would not generally be resolved in favour of the trade mark owner. This is particularly so in the present case where Ms Taylor elected not to nominate headgear and footwear as part of the specification of the goods for which she claims trade mark protection. Having made that election, there is no warrant for construing the word “clothes” more broadly now. As was recognised in Nikken Wellness at [42] and [44] (per Wilcox J), a trade mark owner is bound by the nomination they have made. It is not appropriate to construe a specification to make it more useful for the trade mark owner. Still less would it be appropriate to construe a specification “with an eye to infringement” in a given case. That said, we observe that the Trade Marks Act provides a mechanism within s 120(2) for the monopoly afforded by trade mark registration to be broadened for the purposes of infringement by reference to “goods of the same description”, see Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 at [278]–[286] (per Burley J). It may be taken that Parliament intended that any unfairness attendant upon a narrow construction of the words chosen within a class be ameliorated by reference to that approach in infringement cases.

60    In reaching this conclusion, we are not prepared to hold that the remarks in Flexopack at [74] (per Beach J) and Trident at [48] (per Gleeson J) concerning the use of class headings as an aid to resolving ambiguity in the construction of words used to specify the registered goods or services are wrong, particularly in circumstances where a class heading confirms the meaning arrived at independently of the class heading itself. However, primacy must be given to the words actually chosen by the trade mark owner to delimit the scope of the monopoly they claim. The question of the proper classification of the goods and services can only arise after the specification has been properly construed. Thus, it is the proper construction of the specification that informs the question of classification, not the other way around.

61    Accordingly, grounds 6 and 7 of the cross-appeal have not been established.

4.    THE JOINT TORTFEASOR ISSUE (Cross-appeal grounds 1 – 5)

4.1    Introduction

62    The primary judge considered the infringement case advanced by Ms Taylor by reference to eight separate Trade Channels through which allegedly infringing sales were made (PJ at [378]). The Trade Channels concerned different means by which the impugned merchandise bearing the Katy Perry Mark were promoted and sold at the following locations and tours:

(a)    during the Prismatic Tour conducted by Ms Hudson in 2014 and the Witness Tour in 2018 (the tours Ms Hudson embarked on that brought her to Australia) (First Channel);

(b)    at pop up stores during the Prismatic Tour in Sydney and Melbourne (Second Channel);

(c)    at various retail stores (Third to Fifth and Eighth Channels); and

(d)    online at various websites (Sixth and Seventh Channels).

63    In her cross-appeal, Ms Taylor focusses on three relationships through which the appellants are alleged to have promoted and sold the impugned product as joint tortfeasors.

64    The first is with Bravado which entered into the two relevant agreements discussed above, the 2011 Bravado Agreement and the 2014 Bravado Agreement (together, the Bravado Agreements). The 2014 Bravado Agreement is of relevance to the allegations of joint tortfeasorship arising from the First, Second, Third, Fifth and Sixth Channels.

65    The second is the Blackout Merch Agreement that was entered in advance of the Witness Tour. It is of relevance to the allegations arising from the First and Sixth Channels.

66    The third is the Epic Rights Agreement which is of relevance to the promotion and sale of products online via the Sixth Channel.

67    The primary judge set out the case law relevant to joint tortfeasorship at PJ [285]–[287] and, at PJ [389], summarised its effect, noting that liability depended on whether Ms Taylor established that one or more of Killer Queen, Ms Hudson and Kitty Purry “acted in concert in a common action or design with Bravado, or that one or all of them aided, counselled, directed or joined in commission of the tort of trade mark infringement by Bravado”. Mere facilitation would not be enough.

68    In her Further Amended Notice of Cross-Appeal, Ms Taylor contends that the primary judge erred:

(1)    in finding that Killer Queen and Ms Hudson were not joint tortfeasors together with Kitty Purry in respect of infringing conduct arising from the “Bravado channels of sale”. This is not a term defined in the Primary Judgment, but concerns the sales made during the relationship between the appellants and Bravado (being parts of the First, Second, Third, Fifth and Sixth Channels) (grounds 1 and 2);

(2)    in finding that Kitty Purry was not a joint tortfeasor in respect of infringing conduct arising from the Bravado channels of sale through the Third (the retail store Target) and Fifth (the retail stores Best & Less and Harris Scarfe) Channels (ground 2A);

(3)    in finding that the appellants were not joint tortfeasors with Blackout Merch in respect of admitted infringing conduct carried out by Blackout Merch in relation to the First and Sixth Channels (ground 3);

(4)    in finding that the appellants were not joint tortfeasors with Epic Rights in respect of admitted infringing conduct carried out by Epic Rights in relation to the Sixth Channel 6 (ground 4); and

(5)    in finding, in relation to the Sixth Channel (certain websites) that approvals for designs and products did not originate from Ms Hudson in emails in which Ms Ngoc Hoang-DelVecchio, an employee of DMG, referred to approvals for products, designs and webstore (ground 5).

69    The cross-appeal does not contest findings made by the primary judge in relation to channels 4, 7 or 8. In her submissions, Ms Taylor did not press grounds 3 and 4 insofar as they concerned the conduct of Purrfect Ventures. Accordingly, these matters are not addressed below.

4.1.1    First Channel – Prismatic Tour and Witness Tour

70    The primary judge’s reasons in relation to the First Channel were divided between findings concerning the Prismatic Tour and the Witness Tour. The conduct concerning the Prismatic Tour involved an agreement for the distribution of merchandise bearing the impugned use of the Katy Perry Mark by Bravado (governed by the 2014 Bravado Agreement). The conduct concerning the Witness Tour involved the distribution of merchandise by Blackout Merch (governed by the Blackout Merch Agreement).

4.1.1.1    Prismatic Tour

71    The Prismatic Tour took place in 2014 during which branded merchandise bearing the Katy Perry Mark was offered for sale and sold. The primary judge noted that Ms Taylor advanced her claim for infringement on the basis that Ms Hudson was personally liable as a direct infringer, and that each of Ms Hudson, Killer Queen and Kitty Purry were liable as joint tortfeasors together with Bravado.

72    It was not in dispute before the primary judge that in relation to the Prismatic Tour, Bravado had sold clothing bearing the Katy Perry Mark and so infringed the KATIE PERRY Mark. The disputed issue was relevantly confined to that of joint tortfeasorship. In concluding that the facts were sufficient to establish liability on the part of Kitty Purry, but not Killer Queen or Ms Hudson, the primary judge made the following relevant findings.

73    On 16 December 2011, Ms Hudson and Killer Queen entered into a deed of assignment pursuant to the terms of which Ms Hudson assigned to Killer Queen all of her “rights, titles and interests in and to” the trade marks and service marks and the federal registration and US and international registrations and applications listed in schedule A to the Deed. This included the Katy Perry Mark, the use of which in respect of clothing her Honour subsequently found to infringe the KATIE PERRY Mark.

74    On 6 February 2014, following the release in 2013 of her fourth studio album “Prism”, and in anticipation of Ms Hudson embarking on a global concert tour in support of that album, Kitty Purry as grantor, entered into the 2014 Bravado Agreement with Bravado Merchandising in relation to the sale of Katy Perry branded merchandise including the grant of licence rights in relation to the “KATY PERRY” name and trade mark. The 2014 Bravado Agreement was signed by Ms Hudson as an authorised representative of Kitty Purry.

75    The 2014 Bravado Agreement governs the relationship between Kitty Purry, as the licensor of the Katy Perry Mark, and Bravado. However, there was a hiatus in the evidence concerning the terms of the relationship between Kitty Purry and Killer Queen, as the owner of Ms Hudson’s intellectual property, and the effect of the 2014 Bravado Agreement. Given the terms of the 2014 Bravado Agreement, the primary judge inferred that Killer Queen had granted a licence to Kitty Purry to use the Katy Perry Mark. The primary judge noted in this respect that the timing of and reasons for the grant of that licence was not the subject of evidence, but that the mere granting of this licence did not establish liability for joint tortfeasorship on the part of Killer Queen.

76    Bravado, by the time of the 2014 Bravado Agreement, was licensed to use the Katy Perry Mark in relation to the production and sale of merchandise for the purpose of the Prismatic Tour. The primary judge found:

397.    …The 2014 Bravado Agreement confers a licence on Bravado, sets out Bravado’s entitlements and its obligations in relation to the design, development and production of merchandise, sets out Kitty Purry’s obligations in relation to, among other things, ensuring the exclusivity of Bravado’s licence, its ability to sell merchandise at concert venues and its entitlement and obligations in relation to the approval of designs and the provision of artwork, provides for the fees and royalties payable to Kitty Purry in relation to the sales made and for the undertaking of an audit of Bravado’s accounts.

398.    The 2014 Bravado Agreement does more than merely permit Kitty Purry to exercise quality control in relation to the merchandise to be offered of sale. The agreement governs the whole of the relationship between Kitty Purry and Bravado in relation to the use of the Katy Perry Mark in connection with the development and sale of the merchandise to be sold which bears that mark. Kitty Purry is involved in the process and earns revenue from the sale of the merchandise, as approved by it for sale and sold, at concerts performed by Ms Hudson pursuant to an exclusive licence to do so granted by it to Bravado. The fact that some of the terms in the 2014 Bravado Agreement are, as the respondents contend, “best endeavour” clauses is not to the point and does not detract from the fact that Kitty Purry assumed obligations to assist Bravado in its role of design, manufacture and sale of KATY PERRY branded merchandise for their mutual benefit.

77    Various emails in evidence dated before the Prismatic Tour demonstrated that Ms Hudson was closely involved in providing feedback on, and approving, the design of merchandise as well as identifying the merchandise she wished to bring on tour, as Mr Jensen accepted in cross-examination.

78    In relation to the role of Ms Hudson as an alleged joint tortfeasor, the primary judge observed that Kitty Purry had a contractual right under the 2014 Bravado Agreement to approve the design of merchandise to be sold at concerts during the tour. The evidence demonstrated that Ms Hudson was personally involved in decisions about the type, design and items of merchandise bearing the Katy Perry Mark to be offered for sale. However, her Honour found:

404.    … But there is nothing unusual about that given her role as CEO and sole director of Kitty Purry and the fact that the merchandise to be offered for sale bore her name. Ms Hudson was, as the respondents submitted, the human agent through which Kitty Purry exercised its contractual rights. The evidence demonstrates that both Kitty Purry and Bravado acted in accordance with the obligations imposed on them under the 2014 Bravado Agreement, at least insofar as the design and approval of merchandise was concerned. There is no reason to conclude that they did not do so in relation to the other obligations imposed on them under that agreement. Indeed the evidence demonstrates that Kitty Purry, through its CEO and director, was intimately involved in the finalisation of the merchandise for sale at the concerts.

79    These matters led the primary judge to the conclusion that Kitty Purry acted in a common design with Bravado to design, manufacture and offer for sale clothes bearing the Katy Perry Mark such that it, but not Ms Hudson, was a joint tortfeasor.

80    The primary judge rejected the contention that Killer Queen was also a joint tortfeasor:

408    Finally, further facts identified by Ms Taylor as part of the factual matrix on which she relies to prove liability of the respondents as joint tortfeasors are that Ms Hudson controls Killer Queen and Kitty Purry and, while Kitty Purry was the licensor to Bravado, Kitty Purry was licensed by Killer Queen. Insofar as those factors are concerned:

(1)    the fact that Ms Hudson is the controlling mind of both Killer Queen and Kitty Purry does not assist in establishing a common design on her part, including when considered in light of the other facts relied on by Ms Taylor;

(2)    the fact of a close relationship between two companies, which I would infer to be the case in relation to Killer Queen and Kitty Purry given their common ownership and management, is not of itself sufficient to establish a common design. That is so even if there is overall financial and voting control and the companies regard themselves as a single economic unit (of which there is no evidence in this case): see Apotex Pty Ltd v Les Laboratoires Servier (No 2) (2012) 293 ALR 272; [2012] FCA 748 at [26]; and

(3)    Ms Hudson was the owner of the Katy Perry Mark (at least in Australia) until 2011 when she assigned it to Killer Queen. Given the 2014 Bravado Agreement, I would infer that thereafter Killer Queen granted a licence to Kitty Purry to use that mark. The timing of and reasons for the grant of that licence was not the subject of evidence. In any event, the mere granting of a licence does not establish liability for joint tortfeasorship on the part of Killer Queen. There is no evidence that Killer Queen combined with any party in a common design to secure the doing of acts which amounted to the infringement by Bravado, including when viewed as part of the factual matrix relied upon by Ms Taylor.

4.1.1.2    Witness Tour

81    In relation to the Witness Tour by Ms Hudson, it was not in dispute that the infringing Katy Perry Mark appeared on clothing offered and sold as merchandise, but this was sold for this concert tour by Blackout Merch rather than by Bravado, as discussed at [40]–[41] above. The case advanced by Ms Taylor was that the Court should find that the arrangements between Bravado were, in substance, the same as those subsequently entered into with Blackout Merch.

82    In rejecting this proposition, the primary judge noted early in her reasons that in July 2008, Mr Jensen had worked with Mr Donnell of Bravado for some 15 years before engaging Bravado in relation to the supply of merchandise for Ms Hudson’s tours. In 2016, Mr Donnell left Bravado and Mr Jensen decided to take the business to him at his new business, Blackout Merch. The primary judge found that the terms of the new arrangement were briefly expressed in the October 2017 letter and in some emails that followed it.

83    The primary judge relevantly found that:

(1)    the Blackout Merch Agreement gave Blackout Merch exclusive rights in relation to merchandise to be sold bearing the Katy Perry Mark while Ms Hudson was on tour and required Ms Hudson to provide transportation of merchandise while on tour at no charge to Blackout Merch; and

(2)    whilst Ms Hudson continued to make suggestions in relation to the design of merchandise and provided approval for the merchandise to be offered for sale, the primary judge rejected the submission that Ms Hudson had a contractual right of refusal, finding:

430.    As was apparent from emails which were in evidence between Ms Hoang-DelVecchio and, among others, Mr Donnell, during the course of the relationship with Blackout Merch, Ms Hudson continued to make suggestions in relation to the design of, and provide approval for, merchandise to be offered for sale. However, once again it does not follow from that practice that the arrangements with Blackout Merch were practically the same as those with Bravado. It does no more than demonstrate that Ms Hudson continued to be interested in, to consider and approve merchandise associated with her, despite there being no express term in the Blackout Merch Agreement giving any of the respondents a right of approval of the design or quality of the merchandise to be offered for sale nor of which merchandise was to be brought on tour. That is unsurprising given the likelihood that Ms Hudson would be interested in the development of her brand as it applied to merchandise and in the arrangements for the Witness Tour and would wish to protect her Katy Perry Mark and the reputation in the name “KATY PERRY”.

84    The primary judge concluded:

434.    The only evidence of the arrangement between Blackout Merch and the respondents for the sale of KATY PERRY branded merchandise during the Witness Tour is as set out in the Blackout Merch Agreement. Given its terms and the lack of any other evidence I would not conclude that the respondents or any of them acted in concert with Blackout Merch to secure the doing of acts that constituted infringement of the Applicant’s Mark by Blackout Merch in its offering for sale and sale of clothes, and goods of the same description, bearing the Katy Perry Mark in Australia during the Witness Tour. That claim is not made out.

4.1.2    Second Channel – Pop-up Stores

85    In relation to the Second Channel, pop-up stores, the primary judge found that the business arrangements were in effect the same as those that applied for the Prismatic Tour under the 2014 Bravado Agreement and accordingly that the same conclusions as to joint tortfeasorship applied. These were:

(1)    Bravado, as licensee of the Katy Perry Mark, had infringed the KATIE PERRY Mark, by advertising and selling clothes bearing the Katy Perry Mark;

(2)    Kitty Purry was liable as a joint tortfeasor in relation to the advertising and selling of clothes bearing the Katy Perry Mark in pop-up stores; and

(3)    Killer Queen and Ms Hudson were not found liable as joint tortfeasors.

4.1.3    Third Channel – Target Stores

86    The primary judge noted that the Third Channel of sale concerns the sale of clothes bearing the Katy Perry Mark in the period 2014 until 2016 by Target Australia Pty Ltd in its stores and online through its website (Target website). The sales were made during the currency of the 2014 Bravado Agreement.

87    The primary judge records that Ms Taylor relied on the terms of the 2014 Bravado Agreement and other documents to demonstrate that Ms Hudson kept close control over the goods sold by Target, contending that Ms Hudson’s involvement was such that not only was she personally liable as an infringer (together with Bravado and Target) but that she, Kitty Purry and Killer Queen were also joint tortfeasors. The appellants repeated their submissions going to the arrangements between Ms Hudson, Killer Queen and Kitty Purry and contended that the evidence rose no higher than to demonstrate that Ms Hudson acted as a director of Kitty Purry.

88    The primary judge noted that it was not in dispute that certain clothing bearing the Katy Perry Mark were marketed and sold by Target in its stores and on the Target website and that these sales were made pursuant to the terms of the 2014 Bravado Agreement. The operation of cl 3.01(b) of the 2014 Bravado Agreement relevantly gave Bravado the exclusive right to sell licensed products through, and by distribution to, retailers. Her Honour also noted that Ms Taylor relied on particular evidence in correspondence tendered of Ms Hudson’s close control over the approval and production of the clothing, finding that a number of these demonstrated Ms Hudson’s involvement, either by providing her views about, and input into, the proposed designs of items of clothes or by approval of designs for sale, including by requesting revisions. However, this was involvement by Ms Hudson in her capacity as the CEO and sole director of Kitty Purry.

89    The primary judge concluded:

463    The facts relied on by Ms Taylor do not evidence that Killer Queen, Ms Hudson and/or Kitty Purry were joint tortfeasors with Bravado and Target in relation to their infringement of the Applicant’s Mark. Ms Taylor has not demonstrated that there was a common profit seeking design by all or any of them with Target and Bravado as alleged. While by the 2014 Bravado Agreement Kitty Purry granted Bravado a licence to use the Katy Perry Mark, including in relation to the sale of the relevant products through third-party retailers, and Kitty Purry had a right to approve designs sold through those retailers, and exercised that right, that is where its involvement ended. In contrast to the sale of the relevant merchandise at concerts and in the related pop-up stores, Kitty Purry had no responsibility for the transport of the merchandise and representatives of Bravado, for facilitating space in the venues where the merchandise was to be sold or for providing for or ensuring any other aspect of sale of the merchandise. Its role in relation to the sale of clothes by Target was limited to one of facilitation.

4.1.4    Fifth Channel – Harris Scarfe and Best & Less

90    The primary judge notes that the Fifth Channel concerns sales of clothes bearing the Katy Perry Mark through the Australian retailers Harris Scarfe and Best & Less and notes the submissions advanced by Ms Taylor that she became aware of this channel of sales later in her preparation for hearing, arising from the late discovery of documents. She submitted that each of these outlets were operated by Pepkor South East Asia Pty Ltd, which entered into an agreement with Universal Music Australia Pty Ltd trading as Bravado Merchandise (UMA) in relation to the distribution of goods bearing the Katy Perry Mark.

91    The primary judge found that some clothes bearing the Katy Perry Mark were sold by each of Best & Less and Harris Scarfe in the financial years 2015 to 2019. Her Honour concluded that those sales were most likely governed by the 2014 Bravado Agreement, noting that the effect of that agreement was to “give Bravado the exclusive right to use the Katy Perry Mark in connection with the manufacture, advertisement, merchandising, promotion and sale of any merchandise and to give Kitty Purry the right to consult in relation to the preparation of artwork to be used in connection with the products and to approve the artwork”. She also found that Bravado agreed to appoint Pepkor as a non-exclusive distributor and reseller, to market and sell Bravado products in Australia including products bearing “artist indicia” which relevantly included the Katy Perry Mark.

92    The primary judge considered email correspondence relied upon by Ms Taylor in support of the contention that Ms Hudson had personal involvement in sales. In one email dated 11 August 2014, a representative of Bravado communicated to Pepkor that Ms Hudson “no longer likes the design and feels it does not tie in with her graphics…”. The primary judge rejected a submission that this email showed that Ms Hudson was involved in providing her personal views in selecting goods to be sold and about their style, as opposed to acting as an officer of Kitty Purry. Moreover, the primary judge found that it was not apparent from this email that Ms Hudson was aware that she was addressing merchandise to be offered for sale by Harris Scarfe or that any such merchandise was to be sold through that retailer. In relation to a second chain of email communication, the primary judge accepted that Ms Hudson was personally engaged in the approval process for designs concerning Harris Scarfe products but was not satisfied that Ms Taylor had demonstrated the capacity in which she was supplying her approval. Taken together, the primary judge was not satisfied that the evidence supported a conclusion that any of the appellants was a joint tortfeasor with Bravado and Harris Scarfe or Best & Less.

93    The primary judge separately rejected a submission that given the paucity of evidence, there was no reason to think that the process of creation of goods for sale and the sale of those goods would have been any different to that determined in relation to Target. The primary judge explained in some detail, from PJ [500]–[505], why this was so. However, it is not necessary to address these matters in the present appeal, as no ground or submission is advanced in relation to this aspect of the case below.

4.1.5    Sixth Channel – Websites

94    The Sixth Channel concerns the sales of goods bearing the Katy Perry Mark through three classes of websites. The first is the Bravado Website which advertised and sold goods bearing the Katy Perry Mark to customers in Australia. The second is a website at katyperry.shop.musictoday.com/store which, from about 2016 until 2020, advertised and sold goods bearing the Katy Perry Mark to customers in Australia (Blackout Merch Website). The website was operated by Music Today, LLC and was used by Blackout Merch as a channel through which to sell and offer Katy Perry merchandise. The third is a series of websites through which Ms Taylor contended Epic Rights sold and promoted merchandise bearing the Katy Perry Mark (Epic Rights Websites).

95    In relation to the Bravado Website the primary judge found that, from 24 October 2013 until about 2016, infringing goods were offered and sold pursuant to the terms of the 2011 Bravado Agreement and thereafter pursuant to the terms of the 2014 Bravado Agreement. The primary judge found that the terms of the two agreements were substantially the same. Her Honour concluded, for substantially the same reasons as her earlier reasons that Kitty Purry was a joint tortfeasor with Bravado, but that Killer Queen and Ms Hudson were not:

516    I am satisfied in relation to the advertising, offering for sale and sales of clothes, and goods of the same description, bearing the Katy Perry Mark on the Bravado Website that Kitty Purry engaged in a “common design” with Bravado and is liable as a joint tortfeasor in relation to Bravado’s infringement. I have reached that conclusion for the following reasons:

(1)    by the terms of the 2011 Bravado Agreement and the 2014 Bravado Agreement Kitty Purry granted Bravado an exclusive right to build a webstore to sell Licensed Products with Kitty Purry maintaining control over approval of designs to be offered for sale on the webstore. That is, as Kitty Purry granted a licence for Bravado to build and operate a webstore and to offer merchandise for sale globally Kitty Purry was aware of and indeed approved the goods which were offered for sale;

(2)    by the 2014 Bravado Agreement, Kitty Purry granted Bravado further rights in relation to the webstore and its operation including co-ordinating with Bravado in the promotion and marketing of the merchandise offered for sale “by sending email blasts to their fan club lists and [posting] news bulletins” and Facebook posts referring to the webstore;

(3)    a link to the webstore was maintained on Ms Hudson’s official site; and

(4)    there was evidence that Kitty Purry, through its director, Ms Hudson, approved the design of goods to be manufactured and thus offered for sale by or through Bravado.

517    I do not reach the same conclusion in relation to Killer Queen and Ms Hudson. They were not party to the 2011 Bravado Agreement or the 2014 Bravado Agreement. They were no more than facilitators. In the case of Killer Queen, it granted a licence in relation to the Katy Perry Mark to Kitty Purry and, in the case of Ms Hudson, she signed the side agreement which appears as Exhibit A to each of the 2011 Bravado Agreement and the 2014 Bravado Agreement. Any involvement by Ms Hudson in approving designs was in her capacity as the chief executive officer and sole director of Kitty Purry.

96    In relation to the Blackout Merch Website, the primary judge found that the terms upon which Blackout Merch became the licensee for the sale of Katy Perry branded merchandise are set out in the Blackout Merch Agreement (see section 2.3 above), pursuant to which, amongst other things, Blackout Merch was granted worldwide exclusive e-commerce rights. Ms Taylor submitted that the Court should find that the arrangements with Blackout Merch were substantially the same as those with Bravado concerning e-commerce and that each of Killer Queen, Ms Hudson and Kitty Purry were joint tortfeasors with respect to Blackout Merch’s infringement. The primary judge rejected this argument and also rejected Ms Taylor’s argument that Ms Hudson had exercised close control over the Blackout Merch Website by reference to a series of emails and messages. She concluded that none of them, whether alone or collectively, were evidence that any of Ms Hudson, Killer Queen or Kitty Purry had any significant input into this channel of sales.

97    In relation to the Epic Rights Websites, the primary judge noted Ms Taylor’s contention that Killer Queen, Ms Hudson and Kitty Purry are liable as joint tortfeasors with Epic Rights in relation to goods bearing the Katy Perry Mark. Her Honour found that since the Witness Tour, Epic Rights had undertaken commercial merchandising arrangements for Katy Perry branded merchandise (other than footwear and handbags which are subject to separate arrangements under Purrfect Ventures Agreements), the terms of which are set out in an email dated 10 March 2020 (Epic Rights Email). Pursuant to these terms all merchandise sold in Australia was sold online, including through the Epic Rights Websites, and included infringing goods bearing the Katy Perry Mark.

98    The primary judge did not infer that the agreement with Epic Rights was substantively the same as the Bravado Agreements insofar as those agreements concerned e-commerce. This was despite evidence from Mr Jensen that the “arrangements” with Epic Rights were, in a practical sense, similar to those with Bravado and Blackout Merch. The primary judge found this for the following reasons:

(1)    there was no evidence that the detailed terms in the Bravado Agreements concerning e-commerce and approvals applied equally to the arrangements with Epic Rights;

(2)    it logically could not be the case that, because practical arrangements for aspects of the relationship with Epic Rights remained the same, the otherwise detailed terms in the Bravado Agreements would apply to the arrangements with Epic Rights; and

(3)    none of those relevant facts (the email exchanges and WhatsApp messages upon which Ms Taylor sought to rely) established that Ms Hudson, Killer Queen or Kitty Purry acted in concert with Epic Rights and others in respect of any infringement by them of Ms Taylor’s Mark.

4.2    Relevant principles of joint tortfeasorship

99    A principal aspect of Ms Taylor’s claim against the appellants is that they, or some of them, are liable as joint tortfeasors for infringement under s 120 of the Trade Marks Act. As a result of the decision of the Full Court in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128; 285 FCR 598, it is apparent that a statutory remedy for infringement against persons who “authorise” infringing use is not available: at [64]–[75] (per Jagot, Nicholas and Burley JJ). Rather, Ms Taylor relies on the common law doctrine of joint tortfeasorship.

100    The broad principle of the liability of joint tortfeasors was considered in Thompson v Australian Capital Television Pty Ltd [1996] HCA 38; 186 CLR 574. In that case, a television station, Channel 7, broadcast a current affairs programme produced by Channel 9 live to viewers in the Australian Capital Territory. The licence to broadcast was granted by Publishing & Broadcasting Pty Ltd (PBL), which was a related entity of Channel 9. The content of the broadcast was defamatory of Mr Thompson. He settled with Channel 9 and executed a deed of release between himself, Channel 9 and PBL, then subsequently sued the broadcaster in the Supreme Court of the Territory. Channel 7 joined Channel 9 and PBL as third parties, seeking, amongst other things, contribution. Although Channel 7 took no part in the production of the programme, it acted in its own right and had the ability to control and supervise the material it televised. It voluntarily decided to broadcast live. Channel 7 sought to defend the proceedings on the grounds that it and the producer were joint tortfeasors and that the release granted to the producer by Mr Thompson also released it.

101    In Thompson, the majority, Brennan CJ, Dawson and Toohey JJ, found at 580–1:

We have no doubt that Channel 9 and Channel 7 were joint tortfeasors. The difference between joint tortfeasors and several tortfeasors is that the former are responsible for the same tort whereas the latter are responsible only for the same damage. As was said in The Koursk, for there to be joint tortfeasors “there must be a concurrence in the act or acts causing damage, not merely a coincidence of separate acts which by their conjoined effect cause damage”. Principal and agent may be joint tortfeasors where the agent commits a tort on behalf of the principal, as master and servant may be where the servant commits a tort in the course of employment. Persons who breach a joint duty may also be joint tortfeasors. Otherwise, to constitute joint tortfeasors two or more persons must act in concert in committing the tort.

(Citations omitted.)

102    Justice Gummow said at 600:

In England, Australia and New Zealand, criteria for the identification of joint tortfeasors are to be found in expressions used in The Koursk. Scrutton LJ there spoke of “two persons who agree on common action, in the course of, and to further which, one of them commits a tort”, saying that in such a case there is one tort committed by one of them “in concert with another”. Sargant LJ accepted the proposition that persons are joint tortfeasors when their “respective shares in the commission of the tort are done in furtherance of a common design” so that those who “aid or counsel, direct, or join” in commission of the tort are joint tortfeasors.

(Citations omitted.)

103    In Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2016] FCAFC 22; 329 ALR 522 (Aristocrat Technologies FC) the Full Court considered on appeal an argument contesting a finding that the sixth respondent, Mr Allam, was liable as a joint tortfeasor for trade mark infringement, by reason of a finding that he was involved in a joint enterprise or common design. At [141]–[143] of Aristocrat Technologies FC, Nicholas, Yates and Wigney JJ stated:

141.    There are numerous authorities which have considered the concept of common design in the context of the intellectual property rights conferred by statute. Some of these authorities are referred to in Universal Music Australia Pty Ltd v Cooper (2005) 150 FCR 1. In that case, which involved allegations of copyright infringement, Tamberlin J said at [135]-[136]:

[135]    The authorities indicate that in order to make out a case of joint tortfeasor liability on the basis that copyright infringement is a statutory tort, it is necessary to establish that there has been a common design by the respondents to participate in or induce or procure another person to commit an act of infringement. In WEA International Inc v Hanimex Corp Ltd (1987) 17 FCR 274 at 283, Gummow J points out that in circumstance[s] where two or more persons assisted or concurred in or contributed to an act causing damage this is not of itself sufficient to found joint liability and there must also be some common design. In other words, there must be something in the nature of concerted action or agreed common action. It is not necessary that there must be an explicitly mapped out plan with the primary offenders. Tacit agreement between the parties is sufficient: see Unilever plc v Gillette (UK) Ltd [1989] RPC 583 at 609 per Mustill LJ; Molnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112; [1992] RPC 21 at 29 per Dillon LJ (with whom Leggatt LJ agreed). In Intel Corp v General Instrument Corp (No 2) [1991] RPC 235 at 241, Aldous J stated that:

that capacity to control will not establish a common design. It is the extent of the control actually exercised or the involvement which is relevant and, in particular, whether it amounts to a common design to do the acts complained of.

[136]    The relevant authorities were considered by the High Court in Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574 at 580-581, where the joint judgment referred to the necessity for two or more persons to act in concert in committing the tort. At 600, Gummow J cited with approval the comment of Sargent LJ in The Koursk [1924] P 140 at 159-60 that persons are joint tortfeasors when their respective shares in the commission of the tort are done in furtherance of a “common design” so that those who aid or counsel, direct or join in the commission of the tort are joint tortfeasors.

See, on appeal, Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380 at [87] per Branson J and at [173] per Kenny J.

142.    We respectfully agree with Tamberlin J’s summary of the authorities. We would add that it is not necessary that the parties to the common design intend to infringe. As Mustill LJ (with whom Ralph Gibson and Slade LLJ agreed) observed in Unilever plc v Gillette (UK) Ltd [1989] RPC 583 at 602, it is not necessary to show “a common design to infringe … it is enough if the parties combine to secure the doing of acts which in the event prove to be infringements”: see also Unilever v Chefara Properties Ltd [1994] FSR 135 at 138.

143.    In the present case it is not necessary for the Aristocrat parties to show that the participants in the common design deliberately infringed the 428 mark. It was sufficient to show that the 428 mark was infringed as a result of their concerted action. The fact that the evidence did not establish that the Global/Impact respondents knew that the impugned machines included fake compliance plates and counterfeit game software provides no answer to the trade mark case against any of the respondents including, in particular, Mr Allam.

104    Where a director of a company is involved, the cases demonstrate that liability of a director for procuring a tort of the company is a form of joint liability, the director and the company being joint tortfeasors. In Keller v LED Technologies Pty Ltd [2010] FCAFC 55; 185 FCR 449 (Keller FC) the Full Court, comprised of Emmett, Besanko and Jessup JJ, expressed different views as to the circumstances in which a director would be liable as a joint tortfeasor for the acts of the company. It is not necessary for present purposes to dwell on those differences, which were concisely summarised by Besanko J in Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255; 97 ACSR 127 at [142]–[146]. In JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 329 ALR 625 (JR Consulting FC) the Full Court, after citing the principle set out in The Koursk [1924] LRP 140; 18 Lloyd’s Rep 153, said at [335] (per Bennett, Greenwood and Besanko JJ):

335.    As a matter of foundation principle then, in order for a director to be regarded as a joint tortfeasor with the company of which he or she is a director, there must be concurrence in the acts of both the company and the director causing the damage rather than coincidence of roles comprised of the company as an entity doing something and a director discharging duties as a director of the company doing that thing. This may be the implicit principled source of the notion articulated in the line of authority to the effect that the director must act, engage, so as to “make” the tort of the company “his or her own”, that is, a demonstrated concurrence in the acts giving rise to the civil wrong causing the damage in suit rather than a coincidence of rolls.

105    The Full Court reviewed the differing tests set out by the Court in Keller FC and concluded at [350]–[351] (per Bennett, Greenwood and Besanko JJ):

350.    We suspect that there is ultimately not a great deal of difference between these lines of authority as the director must be shown to have directed or procured the tort and the conduct must, clearly enough, go beyond causing the company to take a commercial or business course of action or directing the company’s decision-making where both steps are the good faith and reasonable expression of the discharge of the duties and obligations of the director, as a director. The additional component required is a “close personal involvement” in the infringing conduct of the company and inevitably the quality or degree of that closeness will require careful examination on a case by case basis. That examination might show engagement by the director of the kind or at the threshold described by Finkelstein J in Root Quality at [146] (as earlier discussed) which would undoubtedly establish personal liability in the director or a less stringent degree of closeness (perhaps described as “reckless indifference” to the company’s unlawful civil wrong causing harm), yet sufficiently close to demonstrate conduct of the director going beyond simply guiding or directing a commercial course and engaging in (perhaps vigorously) decision-making within the company as a director.

351.    Ultimately, the question, on the facts, is what was the conduct of the director said to go beyond the proper role of director so as to descend into the realm of “close personal involvement”?

106    The passage from JR Consulting FC above was followed and applied by the Full Court in Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; 385 ALR 514 at [136]–[138] (per Nicholas, Yates and Burley JJ) and decisions of the New South Wales Court of Appeal: Anchorage Capital Master Offshore Ltd v Sparkes [2023] NSWCA 88; 11 NSWLR 304 (per Ward P, Brereton JA and Griffiths AJA); Marino v Bello (No 3) [2022] NSWCA 181; 408 ALR 650 at [15] (per Brereton JA, Macfarlan JA agreeing at [1] and Kirk JA agreeing at [25]).

4.3    Consideration

107    It is convenient to approach the joint tortfeasor issue in the manner addressed in the submissions, which is by reference to the three relevant relationships identified by Ms Taylor, being those between Ms Hudson, Kitty Purry, Killer Queen on the one hand and each of the licensees Bravado, Blackout Merch and Epic Rights on the other. It is in the context of these relationships that it is necessary to consider the relevant trade channels. The parties agreed that for this purpose it is sufficient to consider the position in relation to one of the sales channels for each licensee, with the analysis being effectively the same for all other channels applicable to that licensee.

4.3.1    Bravado

108    There is no challenge to the finding of the primary judge that Kitty Purry was engaged as a joint tortfeasor with Bravado in respect of Bravado’s trade mark infringement. That conclusion was, with respect, plainly correct.

109    In this regard, the primary judge considered that the following matters, taken together, were sufficient to support the conclusion that Bravado and Kitty Purry acted in concert in a common design to manufacture, design and offer for sale merchandise which included clothes bearing the Katy Perry Mark in Australia (PJ at [407]):

(1)    Kitty Purry had a contractual right under the 2014 Bravado Agreement to approve the design of merchandise to be sold at concerts (PJ at [408]);

(2)    The 2014 Bravado Agreement does more than merely permit Kitty Purry to exercise quality control over merchandise to be offered for sale, it governs the whole of the relationship between Bravado and Kitty Purry concerning the development and sale of merchandise bearing the Katy Perry Mark (PJ at [398]);

(3)    Kitty Purry earns revenue from the sale of the merchandise, as approved by it for sale and sold, at concerts performed by Ms Hudson pursuant to the exclusive licence granted to it by Bravado (PJ at [398]);

(4)    The 2014 Bravado Agreement included obligations extending to the transport of the merchandise and designated vendor by Kitty Purry to the concerts (PJ at [393(1)(b)]);

(5)    Ms Hudson, as director of Kitty Purry, was personally involved in decisions about the type, design and items of merchandise bearing the Katy Perry Mark to be offered for sale (PJ at [404]);

(6)    Kitty Purry was also involved in the decision about which goods to import (PJ at [406]);

(7)    Kitty Purry was intimately involved in the finalisation of the merchandise for sale (PJ at [404]); and

(8)    Kitty Purry provided the permission for Bravado to distribute the goods the subject of the licence (PJ at [406]).

110    In our respectful view, the primary judge ought also to have concluded that Ms Hudson was a joint tortfeasor with Kitty Purry. Each of the acts of Kitty Purry described in [110(1)]–[110(5)] above were acts that could only come about by the agency of Ms Hudson, who was the sole director, shareholder, CEO and CFO of Kitty Purry. There is no dispute that Kitty Purry is the alter ego of Ms Hudson (PJ at [404]).

111    Added to that are the following factors which, taken together, demonstrated that Ms Hudson should be regarded as taking steps more than simply as a director or officer of Kitty Purry, but as an actor in a common design with Bravado and Kitty Purry.

112    First, the merchandise bore Ms Hudson’s stage name and served to promote Ms Hudson. The primary judge found that Ms Hudson was closely involved in providing feedback on, and approving the design of merchandise, as well as identifying the merchandise she wished to bring on tour (PJ at [403]). Her Honour also found that Ms Hudson’s personal involvement arose, not only because of her position as sole director, CEO and CFO, but also because the merchandise to be offered for sale bore her name (PJ at [404]). Indeed, the closeness of Ms Hudson’s personal involvement in the promotion and sale of merchandise was explained by the primary judge (in the context of her Honour’s findings in relation to the likelihood of deception or confusion under s 120(2) of the Trade Marks Act) at PJ [595]:

The evidence before me establishes that the Katy Perry Mark has been used in connection with the advertising, offering for sale and sale of clothes in Australia in conjunction with Ms Hudson’s tours and the release of her albums as well as through websites and some retailers. In that regard I accept the respondents’ submission that the advertising, offering for sale, sale of clothes and the clothes themselves bearing the Katy Perry Mark have been closely tied to Ms Hudson’s role as a popular music artist in Australia. Indeed most of the clothes offered for sale and sold bear images of Ms Hudson or graphics that are related to her albums or individual songs. That is, there is a close connection between Ms Hudson and the use of the Katy Perry Mark on much of the merchandise offered for sale, including clothes and, to the extent I am found to be wrong, goods of the same description. That being so, I would comfortably conclude that the way in which the Katy Perry Mark was or is used is not likely to deceive or cause confusion.

113    Secondly, as the sole shareholder, she too could be expected to derive financial benefit from the sale of the Katy Perry branded merchandise.

114    Thirdly, Ms Hudson’s relationship with Bravado went beyond the terms of the 2014 Bravado Agreement. It was extended by reference to the terms of the Side Letter dated 6 February 2014. Ms Hudson entered into the side agreement with Bravado on the same day that the Bravado Agreement was entered. The primary judge refers to this in her reasons but did not address the consequences of its terms in considering the question of joint tortfeasorship (PJ at [517]).

115    The Side Letter notes that, pursuant to the 2014 Bravado Agreement, Kitty Purry:

…is exclusively entitled to all rights throughout the world (“my Merchandising Rights”) with respect to the use of my name…symbols, emblems, logos, designs, likenesses, visual representations, services marks, and/or trademarks (“my Licensed Property”), in connection with the manufacture, advertisement, merchandising, promotion, distribution and sale of any merchandise utilising my Licensed Property….

116    Pursuant to the Side Letter, Ms Hudson also confirms her knowledge of the 2014 Bravado Agreement, personally guarantees that she will fulfill all of the commitments contained in the 2014 Bravado Agreement (cl 1), warrants that should Kitty Purry cease to be “solely and exclusively entitled to [her] Merchandising Rights” she will “at [Bravado’s] request do all such acts and things as shall give to [Bravado] the same rights … as [it] would have had under the [2014 Bravado] Agreement…” (cl 2). Further, Ms Hudson agrees that she will look only to Kitty Purry for the payment of monies to her by reason of her grant of rights in accordance with the 2014 Bravado Agreement (cl 4) and provides a personal indemnity to Bravado for the performance of Kitty Purry’s obligations under the 2014 Bravado Agreement (cl 6). These matters elevate the role of Ms Hudson beyond that of CEO and director, managing the operations of Kitty Purry. It is apparent that Ms Hudson was personally invested in the arrangements of Kitty Purry beyond the role of director or CEO.

117    Fourthly, the relationship between Ms Hudson, Killer Queen and Kitty Purry warrant examination. Each of Killer Queen and Kitty Purry were under the sole ownership of Ms Hudson. Ms Hudson was the manager of Killer Queen from the time Killer Queen was established. Ms Hudson was also the CEO, CFO, secretary and director of Kitty Purry. Kitty Purry was incorporated in April 2008. Killer Queen was incorporated in August 2009. On 10 February 2011, Kitty Purry and Bravado entered into the 2011 Bravado Agreement. That agreement was signed by Ms Hudson as an authorised representative of Kitty Purry. At that point in time, Ms Hudson was the owner, or at least considered herself to be the owner of, the intellectual property rights in the Katy Perry Mark, accordingly not only granting Kitty Purry the right to an exclusive licence of that mark but also as licensor, demonstrating knowledge and approval of the terms by which Bravado used that mark (cl 3.01 of the 2011 Bravado Agreement).

118    However, in December 2011, within a year of the 2011 Bravado Agreement, Ms Hudson had assigned all of her rights and interests in various identified trade marks, including the Katy Perry Mark to Killer Queen (PJ at [37]). There is no suggestion that there was any change to the terms of the 2011 Bravado Agreement. When the 2014 Bravado Agreement was entered into, it was Kitty Purry, not Killer Queen who was the licensee. In the absence of other evidence, the primary judge correctly inferred from the circumstances that Killer Queen had granted a licence to Kitty Purry for continued use of the mark and Kitty Purry’s continued licensing of the mark to Bravado (PJ at [408(3)]). That inference necessarily arose because of the intimate relationship between Ms Hudson, Killer Queen and Kitty Purry. In these circumstances, in our view it may be seen that Ms Hudson procured that there would be a licence of the intellectual property rights in her stage name from Killer Queen to Kitty Purry for the purpose of enabling Kitty Purry to participate in the infringing activity in concert with Bravado.

119    Taken together, in our view this yields the conclusion that Ms Hudson also ought to be found to be a joint tortfeasor with Kitty Purry and Bravado.

120    However, we do not consider that the primary judge erred in declining to find that Killer Queen was a joint tortfeasor. There is no evidence that it played any active role in the commission of the tort. Its role was simply as the licensor of (relevantly) the Katy Perry Mark to Kitty Purry.

121    Having reached this conclusion in relation to the First Channel of sales insofar as Bravado was involved, it follows from the concession made by counsel that the same conclusion applies to each of the other sales channels in which Bravado was engaged. More particularly, the matters to which we have referred above are sufficient to conclude that the primary judge erred in failing to find in relation to the Prismatic Tour, part of the First Channel of sales, that Ms Hudson was a joint tortfeasor together with Kitty Purry and Bravado in relation to that infringing conduct. They also are sufficient for us to conclude in relation to the pop-up stores (the Second Channel) that the primary judge erred in concluding that Ms Hudson was not also a joint tortfeasor together with Kitty Purry and Bravado in relation to the sale by Bravado of goods that the primary judge found at PJ [443] were infringing goods. The same findings also apply to the marketing and sales of clothing bearing the Katy Perry Mark by Target in its stores and online, as addressed by the primary judge in relation to the third sales channel at PJ [463], which was a sales channel governed by the arrangements with Bravado with the consequence that each of Kitty Purry and Ms Hudson are also joint tortfeasors with Bravado. The same applies to the fifth sales channel, which is sales made through Best & Less and Harris Scarfe and the sixth sales channel, being the Bravado Website.

4.3.2    Blackout Merch

122    Ms Taylor submits that the primary judge erred in failing to find that, regardless of the precise terms of the contract evidenced by the October 2017 letter and subsequent emails, the oral and written evidence of Mr Jensen confirmed that, in a practical sense, the terms and arrangements between the parties continued on the same basis as they had under Mr Donnell’s eye when he was at Bravado. Ms Taylor submits that the primary judge erred in approaching the question of joint tortfeasorship too narrowly and requiring a level of formality that is not required on the authorities. The appellants submit that the primary judge was correct to conclude that none of the cross-respondents was liable as joint tortfeasors with Blackout Merch on the basis merely of an inference that the arrangements with Blackout Merch were the same as those under the 2014 Bravado Agreement. They submit that the contentions as to the involvement of the respondent did not rise above conjecture and that the terms of the Blackout Merch Agreement were not in dispute. Mr Jensen’s oral evidence to the effect that the process of merchandising, including the approval or non-approval of designs continued to work “in a similar way” to that under the 2014 Bravado Agreement, does not establish that the arrangement was the same and the evidence regarding the Blackout Merch sales channels did not equate to the matters that established the liability as a joint tortfeasor for Kitty Purry pursuant to its arrangements under the 2014 Bravado Agreement.

123    The case advanced before the primary judge was that her Honour should first infer that the terms pursuant to which Blackout Merch conducted itself were materially the same as the terms under the 2014 Bravado Agreement and, secondly, that those materially same terms were sufficient to warrant the conclusion that each of Killer Queen, Kitty Purry and Ms Hudson were joint tortfeasors with Blackout Merch just as they were with Bravado.

124    The complaint on appeal is, in effect, that the primary judge determined that the terms of the Blackout Merch Agreement were not the same as those with Bravado, but did not go on to consider whether or not the substance of those terms were sufficient to render them liable as joint tortfeasors.

125    The material findings as to the terms of the arrangements with Blackout Merch are set out at PJ [423] and may be summarised as follows:

(1)    The agreement was between Ms Hudson and Blackout Merch in respect of the exclusive rights, worldwide in respect of the touring, wholesale, e-commerce and non-exclusive licensing;

(2)    Royalties were to be paid for each of tour, wholesale, e-commerce and licensing categories;

(3)    Advances were to be made, the primary judge inferred, to Ms Hudson;

(4)    Ms Hudson was to provide transportation for a Blackout Merch merchandising representative and product while on tour at no charge; and

(5)    Royalty statements and payments were to be forthcoming at certain times identified.

126    The primary judge rejected the contention that other terms of the arrangements could be inferred to be the same as the more detailed terms in the 2014 Bravado Agreement. We see no error in that conclusion. It fell to Ms Taylor to establish the factual basis of her claim. Broad evidence from Mr Jensen to the effect that the process of merchandising, including the approval or non-approval of designs “continued to work in a similar way” to that which it had before cannot equate to the terms of the 2014 Bravado Agreement. Such evidence cannot substitute for evidence of the relationships between the relevant parties and most particularly, evidence going to the involvement of Kitty Purry and Killer Queen. We do not consider that this is a case where inferences can be drawn in accordance with the principles in Blatch v Archer (1774) 1 Cowp 63; 98 ER 969 and Australian Securities and Investments Commission v Hellicar [2012] HCA 17; 247 CLR 345 at [165]–[170] (per French CJ, Gummow, Hayne, Crennan, Kiefel and Bell JJ). In the present case, contrary to the submission of Ms Taylor, the primary judge was able to make findings as to the terms of the arrangements. The primary judge was not satisfied that she should infer that were other terms of the arrangements that should be inferred, properly considering that such an approach would invite conjecture (PJ at [432]). We see no error in that conclusion.

127    Furthermore, contrary to the position advanced by Ms Taylor, it is apparent that the terms with Blackout Merch were materially different to those pursuant to the 2014 Bravado Agreement. Most notably, her Honour found that the arrangement was not with Kitty Purry, but with Ms Hudson personally and that she would directly receive payments and royalties. No separate case was advanced below, or on appeal, that by reason of arrangements that were different to those with Bravado, Ms Hudson should be found liable as a joint tortfeasor with Blackout Merch.

128    Accordingly ground 3 of the cross-appeal is not made out. By reason of the agreement of counsel, this applies to the First and Sixth Channels of sales insofar as they concern Blackout Merch.

4.3.3    Epic Rights

129    The cross-appeal, insofar as it concerns Epic Rights, is largely dependent on the same proposition advanced by Ms Taylor in relation to Blackout Merch. As the primary judge records at PJ [535], the case advanced was that, because Mr Jensen gave evidence that the “arrangements” with Epic Rights were, “in a practical sense” similar to those with Bravado and Blackout Merch, she should infer that the agreement with Epic Rights is substantively the same as the Bravado Agreements, insofar as those agreements concern e-commerce.

130    For the reasons that we have given in section 4.3.2 above, we do not consider that the primary judge erred in adopting this approach.

131    Accordingly, Ms Taylor has not established error within ground 4 of the cross-appeal.

5.    INTRODUCTION TO THE DEFENCES AND PRIMARY JUDGE’S FINDINGS

132    Relevant to the good faith defences discussed below, the primary judge found at PJ [667] that, given the working relationship between Mr Jensen and Ms Hudson, at all times Ms Hudson acted on Mr Jensen’s recommendation and that Ms Hudson held the same beliefs as Mr Jensen.

5.1    Use in “good faith”, honest concurrent use and use of own name defences

133    The parties respectively challenge various findings of the primary judge in relation to the two “good faith” defences: s 122(1)(a) and (fa) of the Trade Marks Act.

134    Appeal ground 1 challenges the primary judge’s finding that the own name defence in s 122(1)(a) of the Trade Marks Act is not available to a licensee or joint tortfeasor: (PJ at [626], [630], [631]). Ms Taylor in grounds 8 and 9 of her cross-appeal challenges the primary judge’s finding that Ms Hudson could rely on her stage name for the purposes of the defence, contending that the defence is limited to a person’s “legal” name. By grounds 10 and 11 of her cross-appeal, Ms Taylor challenges the primary judge’s finding for the purposes of s 122(1)(a) that Ms Hudson’s use of her stage name was use in good faith.

135    Appeal ground 2 challenges the primary judge’s conclusion that the use of the Katy Perry Mark in Australia did not constitute honest and concurrent use for the purpose of s 44(3) of the Trade Marks Act.

5.1.1    Legislation

136    Section 122 of the Trade Marks Act provides a defence to infringement of a registered trade mark:

(1)    In spite of section 120, a person does not infringe a registered trade mark when:

(a)    the person uses in good faith:

(i)    the person’s name or the name of the person’s place of business; or

(ii)    the name of a predecessor in business of the person or the name of the predecessor’s place of business; or

…

(fa)    both:

(i)    the person uses a trade mark that is substantially identical with, or deceptively similar to, the first mentioned trade mark; and

(ii)    the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it;

…

137    In respect of the s 122(1)(fa) defence, the appellants contend that the Katy Perry Mark would have been registrable pursuant to s 44(3) of the Trade Marks Act, which relevantly provides:

(3)    If the Registrar in either case is satisfied:

(a)    that there has been honest concurrent use of the 2 trade marks;

(b)    that, because of other circumstances it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

5.2    Primary judge’s findings on “good faith”, honest concurrent use and use of own name defences

5.2.1    Use of own name in “good faith”

138    The primary judge began her consideration of “good faith” in the context of s 122(1)(a) of the Trade Marks Act with an extended consideration of Anheuser-Busch v Budějovický Budvar, Národní Podnik [2002] FCA 390; 56 IPR 182, wherein Allsop J considered that defence, and the defence of honest concurrent use. Her Honour set out [199], [214], [216]–[217] of Anheuser-Busch and noted at PJ [651] that in Anheuser-Busch, the s 122(1)(a) defence failed.

139    At PJ [657], the primary judge noted the observation of Yates J in Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; 275 ALR 526 at [163] that a use in good faith for the purposes of s 122(1)(a) of the Trade Marks Act does not cease to be in good faith when the likelihood of deception is brought to the notice of the alleged infringer.

140    At PJ [658], the primary judge then turned to the decision of Flexopack, noting Beach J’s observation at [108] that the requirement that use be “in good faith” is a requirement of honesty which requires an honest belief at least at the time of adopting the mark that no confusion would arise by reference to the earlier trade mark’s reputation and that there was no intention to divert trade. The defence was not found to be available in Flexopack.

141    The primary judge set out at PJ [661] the relevant considerations set out in Flexopack at [110]–[118], noting that there may be a level of objectivity to the test for good faith as described in Flexopack at [111] (per Beach J).

142    At PJ [664] the primary judge distilled the following principles from the authorities.

First, in order to be able to rely on s 122(1)(a)(i) of the TM Act Ms Hudson must establish that she uses her name, Katy Perry, in good faith. In turn in order to do so she must establish that use of the name was honest use. That is, applying the test in Baume, she must have honestly thought that no confusion could arise and that she had no intention of wrongfully diverting business to herself by using the name. Secondly, as observed in Anheuser-Busch at [217], satisfaction of the requirements of good faith is not concluded by a lack of fraud or lack of conscious dishonesty: see Anheuser-Busch at [217]. Thirdly, and to similar effect there may be a lack of good faith where the person acts in a deliberate manner to take advantage of another party’s reputation, i.e. acts dishonestly, but it does not necessarily follow that in the absence of fraud or dishonesty, good faith is established: see Flexopack at [110], and there may be a level of objectivity to the test as described in Flexopack at [111] (see [661] above).

143    After observing that merchandise, including clothes, bearing the Katy Perry Mark was first developed and sold via the Bravado Website prior to the respondents having knowledge of Ms Taylor’s Mark, the primary judge turned to Mr Jensen’s awareness of Ms Taylor’s Mark noting “[c]ritically, Mr Jensen honestly believed that no confusion was likely to arise from the sale of clothes bearing Katy Perry’s name”: PJ at [666]. The primary judge then set out the relevant evidence founding Mr Jensen’s honest belief at PJ [666], in particular:

(1)    in June 2009, when he authorised the US lawyers for Ms Hudson to seek to resolve the dispute with Ms Taylor on the basis of a mutually satisfactory co-existence arrangement, he did not consider there was any likelihood that members of the public would confuse clothing and other merchandise with Katy Perry’s name on it with clothes of Ms Taylor. Rather, he thought it was possible that the members of the public might confuse Ms Taylor’s clothes with those of Ms Hudson or her licensees and that, if this occurred, it would not adversely affect Ms Taylor and might benefit her given Ms Hudson’s popularity in Australia (see [146] above);

(2)    in July 2009, when the Extension of Time Application was withdrawn, Mr Jensen was not concerned because he did not consider there was any likelihood that members of the public would confuse clothing and other merchandise with Katy Perry’s name on it with clothes of Ms Taylor (see [179] above);

(3)    also in July 2009, when Mr Jensen discussed with Ms Hudson the intention to withdraw the Extension of Time Application he informed her that he was “not concerned if we pull out and she registers her trade mark because the public would not confuse your Katy Perry branded tour merchandise with this lady’s clothes”. Ms Hudson agreed with Mr Jensen’s thinking (see [180] above);

(4)    when Ms Hudson was in Australia in August 2009 for The Hello Katy Tour, at which she sold KATY PERRY branded merchandise, Ms Taylor did not make contact which led Mr Jensen to believe that there was no real likelihood of subsequent contact. He thereafter proceeded at all times on that basis;

(5)    when the 2011 Bravado Agreement was negotiated, and Mr Jensen recommended that Ms Hudson enter into it, he gave no consideration to Ms Taylor and at that time was not aware of any cases of the public being confused that clothes with the Katy Perry name and brand on them were Ms Taylor’s clothes or otherwise associated with Ms Taylor. At that time, it did not occur to him that the public would be confused in that way (see [206] above); and

(6)    similarly when the 2014 Bravado Agreement was negotiated and Mr Jensen recommended Ms Hudson enter into it and the Purrfect Ventures Agreements were negotiated and entered into, Mr Jensen gave no consideration to Ms Taylor and at the relevant times was not aware of any cases of the public being confused that clothes with the Katy Perry name and brand on them were Ms Taylor’s clothes or otherwise associated with Ms Taylor (see [226] and [233] above).

144    At PJ [667], the primary judge recorded that none of the evidence (set out above) was challenged, the effect of which was that Mr Jensen held an honest belief that no member of the public would likely confuse clothes bearing the Katy Perry Mark with clothes bearing Ms Taylor’s Mark,. The primary judge then made the following observations at PJ [668]:

Nor when one looks at the circumstances in which Ms Hudson used and uses her name could it be said that there was or is a lack of good faith on her part. First, it could not be said that there was no intention by Ms Hudson to divert trade way from Ms Hudson or to seek to make use of any goodwill in the Applicant’s Mark. That is because, at the time of first use there was no reputation in the Applicant’s Mark and, even many years later, there was and is only limited reputation in the Applicant’s Mark. Indeed the evidence demonstrates that Ms Taylor sought to obtain publicity for herself by reference to Ms Hudson rather than vice versa. Secondly, while Ms Hudson was aware of the Applicant’s Mark at the time she first used her own name on clothes in Australia and took a calculated risk in proceeding, that risk was taken in circumstances where Mr Jensen held an honest belief as to lack of confusion. Thirdly and similarly, Mr Jensen’s concession that he understood that Ms Taylor may sue for infringement and may be successful in such a claim is also to be viewed in the context of his belief that there was no likelihood of confusion.

145    We interpret the second sentence of PJ [668] to be an unintended error, namely that the primary judge intended to say: “First, it could not be said that there was an intention by Ms Hudson to divert trade away from Ms Taylor or to seek to make use of any goodwill in the Applicant’s Mark”.

5.2.2    Honest concurrent use

146    At PJ [670], the primary judge observed that the availability of the s 122(1)(fa) defence was to be assessed as at the date of the first alleged infringing conduct, which the primary judge found to be 26 June 2009, the date on which Ms Hudson’s Australian trade mark application was lodged (PJ at [689]). In doing so the primary judge rejected the date that the Bravado Website went live in October 2008, as the first date of use of the Katy Perry Mark, on the basis that there was no evidence to show that website was specifically directed to Australian consumers: PJ at [688].

147    An essential element of the appellants’ reliance on s 44(3)(a) of the Trade Marks Act is whether there had been honest concurrent use of the Katy Perry Mark.

148    At PJ [692]–[693], the primary judge made reference to Kenny J’s consideration of what constitutes honest and concurrent use in McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102, including the five non-exhaustive relevant factors set out by Kenny J at [30]:

(1)    the honesty of the concurrent use;

(2)    the extent of the use in terms of time, geographic are and volume of sales;

(3)    the degree of confusion likely to ensure between the marks in question;

(4)    whether any instances of confusion have been proved; and

(5)    the relevant inconvenience that would ensue to the parties if registration were to be permitted.

149    At PJ [697], the primary judge observed that she did not consider that Ms Hudson or the other respondents could have the benefit of s 44(3) of the Trade Marks Act and thus succeed in their s 122(1)(fa) defence. The primary judge proceeded to explain the basis for her conclusion commencing by setting out the following relevant facts at PJ [698]:

(1)    in May 2009 Mr Jensen, and it follows Ms Hudson, became aware of Ms Taylor’s application for registration of the Applicant’s Mark in class 25 for clothes;

(2)    Ms Hudson, through her lawyers, commenced corresponding with Ms Taylor and threatened proceedings if she did not stop using her mark;

(3)    that correspondence continued and Ms Hudson filed the Extension of Time Application;

(4)    in the course of those events on 26 June 2009 Ms Hudson’s TM Application was lodged. Ms Hudson sought registration of the Katy Perry Mark in classes 9, 25 and 41;

(5)    Ms Hudson’s strategy changed after lodgement of Ms Hudson’s TM Application and she attempted to negotiate a co-existence arrangement with Ms Taylor. But Ms Taylor and Ms Hudson did not reach agreement and ultimately Ms Hudson withdrew the Extension of Time Application;

(6)    on 21 July 2009 the Applicant’s Mark was entered on the Register; and

(7)    on 10 September 2009 IP Australia informed Ms Hudson that it could not accept Ms Hudson’s TM Application because the Katy Perry Mark closely resembled the Applicant’s Mark and the goods claimed in class 25 were similar to goods claimed by the Applicant’s Mark in class 25. Ms Hudson was invited to address the problem by deleting the goods in class 25 from her application or by providing evidence of “prior use, honest concurrent use and/or other circumstances”. She elected to do the former.

150    At PJ [699], the primary judge found that use of the Katy Perry Mark in Australia at the date of the first infringing conduct (26 June 2009), did not amount to honest concurrent use. According to the primary judge, Ms Hudson made her application for registration of the Katy Perry Mark in class 25 having knowledge of Ms Taylor’s Mark and while in the midst of a “significant” dispute with the respondent about her entitlement to use and register that mark. Ms Hudson wished to register the Katy Perry Mark in relation to a broad range of clothes in class 25. She knew at the time that Ms Taylor’s Mark presented a problem for her insofar as her use of the Katy Perry Mark in Australia on clothes was concerned.

151    The primary judge distinguished the facts of the present case from those in McCormick, observing that Ms Hudson was not intending to use the Katy Perry Mark in relation to one particular product, nor to sell clothes bearing that mark in a discrete geographical area, as was the case with Mrs McCormick, who sold her instant batter first from her caravan from where she also sold fish and chips and later from stores in north Queensland: PJ at [700].

152    In a finding which the appellants challenge on appeal, the primary judge stated at PJ [700]:

[n]or is there any evidence before me to suggest that at the time Ms Hudson’s TM Application was lodged Ms Hudson held an honest belief that no confusion would result or any evidence of extensive use of the Katy Perry Mark in Australia in relation to clothes as at June 2009. To the extent that there was use, it was very limited.

153    At PJ [701], the primary judge noted that the lack of demonstrated confusion and the question of relative inconvenience might favour registration under s 44(3)(a), however, she observed that those factors were outweighed by her finding as to the circumstances in which Ms Hudson first used the Katy Perry Mark in Australia (as set out at PJ [698]). As a result, the primary judge concluded that there was no honest concurrent use, and arguably no use at all beyond the lodgement of Ms Hudson’s trade mark application.

5.2.3    Use of own name

154    The primary judge held at PJ [630] that the defence under s 122(1)(a) of the Trade Marks Act is only available to the person who is using the mark. This means, the primary judge said, that a person who is a joint tortfeasor with the person who has infringed a mark, such as a third-party trader or a licensee, cannot rely on the defence because that person “is not directly using the mark”.

155    In relation to the present case, the primary judge found that Ms Hudson and Bravado had, separately, infringed Ms Taylor’s Mark. Her Honour found that Kitty Purry was a joint tortfeasor in respect of Bravado’s infringements: PJ at [583]. The consequence of the primary judge’s construction of s 122(1)(a) was that Ms Taylor could rely on the defence, but Kitty Purry, as a joint tortfeasor with Bravado, could not.

6.    USE IN GOOD FAITH (Cross-appeal grounds 10 and 11)

6.1    Introduction

156    By grounds 10 and 11 of her cross-appeal, Ms Taylor challenges the primary judge’s finding as to the meaning of “good faith” in s 122(1)(a)(i) and that Ms Hudson had established “good faith” in her use of the name “Katy Perry” being the use of her own name in good faith.

157    Ms Taylor submits that she has never disputed that Ms Hudson did not consider that confusion would arise from use of the Katy Perry Mark and that Ms Hudson had no intention of diverting business from Ms Taylor to herself. However, Ms Taylor contends that words “good faith” in s 122(1)(a) of the Trade Marks Act are broader than merely relating to absence of confusion or intention to divert trade, and require consideration of Ms Hudson’s conduct as a whole.

158    Ms Taylor submits that the primary judge erred in her reasoning at PJ [666]–[668], as the only way the primary judge could have reached her conclusion that Ms Hudson was acting in good faith was by treating a lack of intention to divert business and a lack of awareness of confusion as being determinative of use in good faith. Ms Taylor contends that more is required to establish good faith and that this reasoning is contrary to authorities, such as Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4) [2016] FCA 138; 116 IPR 269 at [298]–[303] (per McKerracher J), Sterling Pharmaceuticals Pty Ltd v Johnson & Johnson Australia Pty Ltd [1990] FCA 278; 96 ALR 277 at 311 (per Hill J) and Flexopack at [116]–[118] (per Beach J).

159    Ms Taylor also refers to the following statement made by the primary judge at PJ [842] in the course of her Honour’s reasoning to award additional damages:

Fourthly, notwithstanding that she knew of the registration of the Applicant’s Mark and that the Katy Perry Mark was not registered in class 25, Ms Hudson (and the respondents) proceeded with the original plan to sell clothes bearing the Katy Perry Mark in Australia. They took a calculated risk in doing so. Their action was deliberate in the sense that they did not let the fact of the Applicant’s Mark stand in their way, but proceeded notwithstanding that obstacle. They were prepared to, and did, take a risk. Knowing their conduct was infringing conduct, they engaged in what can only be described as a “calculated disregard of [Ms Taylor’s] rights”.

160    Ms Taylor submits that it is incongruous for the primary judge to have found that Ms Hudson adopted and continued to use the Katy Perry Mark in respect of clothing in Australia in good faith for the purposes of s 122(1)(a) of the Trade Marks Act. Ms Taylor contends that this conflict arises in light of the primary judge’s statement above, and her finding that Ms Hudson’s conduct did not constitute honest concurrent use, as well as her finding that Kitty Purry, Ms Hudson’s alter ego and an entity with precisely the same knowledge as her, should be found to be an infringing wrongdoer for whom condemnation is required. Ms Taylor submits that the only way the primary judge could have so found was based on the view that “good faith” in respect of s 122(1)(a) is confined to a consideration only of whether there is an awareness of confusion or intention to divert business.

161    The appellants submit neither the primary judge’s distillation of the principles, nor her application of them at PJ [665]–[668] are in error. The appellants contend that the authorities cited by Ms Taylor, namely Harcourts, Sterling Pharmaceuticals and Flexopack, do not point to any error in the primary judge’s reasoning when examined. Further, the appellants submit that her Honour’s reliance upon the United Kingdom position and consideration of the meaning of “good faith” in the context of the own name defence was apt and consistent with Australian authorities which have considered this defence.

6.2    Consideration

6.2.1    Meaning of “good faith”

162    It is apparent from the primary judge’s distillation of the authorities at PJ [664] that she was well aware that a consideration of whether Ms Hudson’s use of her own name was use in “good faith” required a consideration of more than whether Ms Hudson had an intention to divert business or had an awareness that confusion would arise by reference to the reputation of Ms Taylor’s Mark. Contrary to Ms Taylor’s contention, the primary judge did not treat those matters as determinative as we discuss in the next section.

163    As we noted above, the primary judge commenced her consideration of the “good faith” requirement in s 122(1)(a)(i) with a review of the authorities, starting with the decision of Allsop J in Anheuser-Busch. At PJ [652], the primary judge noted that the first respondent’s use in Anheuser-Busch was not in good faith. Her Honour set out Allsop J’s reasoning in Anheuser-Busch at [199] that the first respondent was aware of Anheuser-Busch’s registrations for “Budweiser” and “Bud” in Australia, and the existence of a reputation for Budweiser in Australia, but not perhaps, its level.

164    The primary judge then extracted [214] of Anheuser-Busch, where Allsop J referred to the decision in Baume & Co Ltd v A H Moore Ltd [1958] Ch 907; 2 WLR 797, Ch D and his observations about the principles set out in Baume at [216], [217] (per Jenkins, Romer and Ormerod LJJ). An important factor in Allsop J’s decision was the absence of any evidence from the respondents that they positively believed that there would be no confusion. His Honour observed in Anheuser-Busch at [216] that “if it had been positively believed that there would be no confusion, I think someone would have said so”. The absence of an honest belief that no confusion would arise in the circumstances led Allsop J to find that, although the first respondent was not consciously dishonest, it did not use and did not intend to use, its own name in good faith for the purposes of s 122.

165    It is clear from Allsop J’s analysis of the first respondent’s conduct in that case, that his Honour considered the requirements of good faith to be broader than merely an honest belief relating to an absence of confusion. However, the absence of proof of such an honest belief was a strong indication of an absence of good faith. At [217] in Anheuser-Busch in a passage quoted by the primary judge at PJ [654]–[656], Allsop J expressly recognised that the satisfaction of the requirements of good faith is not concluded by a finding of lack of fraud or lack of conscious dishonesty. His Honour’s analysis at [216]–[217], including his citation of Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; 30 FCR 326 at 355–6 (per Gummow J, Lockhart L agreeing at 341), proceeds on the basis that the absence of these elements — knowledge that confusion will arise, or an intention to divert goodwill — is determinative of a lack of good faith. However, the reverse is not true. Each of these elements are necessary for, but not determinative of, a finding of good faith. A conclusion of use in good faith must be made against the backdrop of the circumstances as a whole.

166    Something less than a fraudulent intention will suffice to prevent use being in good faith: Johnson & Johnson at 355 (per Gummow J, Lockhart J agreeing at 341) citing Adrema Ltd v Adrema-Werke GmbH [1958] RPC 323 at 324 (per Danckwerts J). This can involve use of the mark for an ulterior motive or for the purpose of causing the detriment of the original mark or its owner: Johnson & Johnson at 356 (per Gummow J, Lockhart J agreeing at 341) citing Sterling Pharmaceuticals at 311 (per Hill J). In Johnson & Johnson, an international strategy to make the word “Caplets” into a generic word, as a way to avoid infringement, was held to be not use in good faith: at 355–6 (per Gummow J, Lockhart J agreeing at 341).

167    A lack of intention to divert business and an honest belief that confusion is unlikely to arise are both factors for a finding that use is in good faith, but neither factor is sufficient for that finding: Flexopack at [108] (per Beach J). A finding that a use is made in good faith can only be reached after a consideration of all the relevant surrounding circumstances. As we discuss in the next section, that is what the primary judge did.

6.2.2    Use in good faith in the circumstances

168    Contrary to Ms Taylor’s contention, the primary judge did not treat a lack of intention to divert business or a lack of awareness of confusion as being determinative of use in good faith. Rather, the primary judge had regard to the surrounding circumstances before reaching her conclusion that Ms Hudson’s use of her name was use in good faith for the purposes of s 122(1)(a)(i) of the Trade Marks Act.

169    At PJ [666], the primary judge looked at the broader circumstances in which Ms Hudson used her name, observing that merchandise, including clothes, bearing the Katy Perry Mark were first developed and sold via the Bravado Website prior to Mr Jensen and Ms Hudson having any knowledge of Ms Taylor’s Mark. The primary judge then set out all the relevant times at which Mr Jensen (and Ms Hudson) honestly believed that no confusion was likely to arise from the sale of clothes bearing the Katy Perry Mark, even though by that time they were aware of Ms Taylor and Ms Taylor’s Mark, and their attempts to co-exist with Ms Taylor had failed.

170    In her summary of Mr Jensen’s unchallenged evidence at PJ [666(4)]–[666(6)], the primary judge had regard to the effect on Mr Jensen’s state of mind of the fact that Ms Taylor raised no issue with Ms Hudson’s conduct, either during The Hello Katy Tour in August 2009 or at any time thereafter (prior to 2018) and that Mr Jensen was not aware of any cases of the public being confused by the use of Katy Perry’s name on clothes in that period (PJ at [206]). The import of that evidence is that Mr Jensen never had any reason to depart from his original honest belief that no confusion would arise. There was no challenge to Mr Jensen’s evidence as summarised at PJ [666] at trial or on appeal.

171    At PJ [666]–[668], the primary judge looked more broadly at the circumstances in which Katy Perry’s name was used on clothes in Australia and concluded that it “could [not] be said that there was or is a lack of good faith on [Ms Hudson’s] part”. In doing so, the primary judge observed that it could not be said that there was an intention by Ms Hudson to divert trade away from Ms Taylor or to make use of any goodwill in Ms Taylor’s Mark. Indeed, the evidence showed that it was Ms Taylor who had sought to obtain publicity for herself by reference to Ms Hudson, not the reverse. This was not the end of the primary judge’s consideration.

172    At PJ [668], the primary judge referred to the objectively reasonable basis for Mr Jensen’s (and Ms Hudson’s) belief that no confusion was likely to arise from the use of Katy Perry’s name on clothes in Australia, namely the fact that at the time such use commenced there was no reputation in Ms Taylor’s Mark and that, even many years later, the position was little changed.

173    It must also be recalled that Ms Hudson had adopted her name as a mark some five years prior to Ms Taylor starting her business, and in that time, Ms Hudson had acquired an international reputation in her name in music and entertainment if not more broadly.

174    The “calculated risk” Ms Hudson took in proceeding to use her name as a mark, must be viewed in the context of all the matters set out by the primary judge in PJ at [666]–[668]. In that context, the risk was small, and to be contrasted with the risk in circumstances where for example, the mark had not been honestly adopted, or there were known instances of actual confusion.

175    The primary judge did not err in her conclusion that Ms Hudson’s use of her name was use in good faith and cross-appeal grounds 10 and 11 are rejected.

7.    HONEST CONCURRENT USE DEFENCE (Appeal ground 2)

7.1    Introduction

176    The appellants contend that the primary judge erred at PJ [700]–[704] in concluding that the appellants’ use of the Katy Perry Mark at the date of the first infringing conduct did not amount to honest concurrent use for the purposes of s 44(3) of the Act, and thus the defence in s 122(1)(fa) was not made out.

177    The appellants submit that the primary judge’s errors were twofold. At the hearing the appellants abandoned what they termed the first key error; that the primary judge should have concluded that the date of the first alleged infringing conduct was the earlier date of October 2008, being the date the Bravado Website went live. However, in oral reply the appellants then made an application to amend the date of the first infringing conduct in appeal ground 2 to October 2013, being the first date of actionable infringement pursuant to s 120 of the Trade Marks Act having regard to the limitations period, being the first date of pleaded trade mark infringement.

178    As to the second key error, the appellants contend that the primary judge’s conclusion that the first infringing use (being June 2009, the date Ms Hudson actually applied for the Katy Perry Mark in Australia including in relation to clothes) was not honest, was inconsistent with her earlier finding, based on unchallenged evidence, that Mr Jensen (and therefore Ms Hudson) held an honest belief that no member of the public would likely confuse clothes bearing the Katy Perry Mark with clothes bearing Ms Taylor’s Mark, and her finding that Ms Hudson’s use of the mark was in good faith, such that Ms Hudson could rely on the defence in s 122(1)(a) in respect of her direct trade mark infringements (PJ at [704]).

179    Ms Taylor submitted that there had been no honest concurrent use of the Katy Perry Mark as at 26 June 2009. First, the appellants’ use of the Katy Perry Mark in Australia was not use in good faith, nor honest concurrent use. Second, there could be no honest concurrent use, as at 26 June 2009 there was no concurrent use of the mark on clothes in Australia that was not infringing use. Relying on Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719; 141 IPR 463 at [65] (per Davies J), Ms Taylor contended that the defence under s 122(1)(fa), insofar as it relies on s 44(3)(a), must fail where the first use of the Katy Perry Mark constituted infringing use.

7.2    Application to amend the Further Amended Notice of Appeal

180    The appellants accept that at trial they asserted that Ms Hudson’s first use of the Katy Perry Mark on clothes was late September or October 2008. This was the date when the appellants contended that clothing bearing the Katy Perry Mark was first available for purchase by persons in Australia online via the Katy Perry store on the Bravado Website. The appellants also accept that at trial they contended that the hypothetical registration for the purposes of s 122(1)(fa) is to be assessed at the date of Ms Hudson’s first infringing use of the Katy Perry Mark. However, they submit that what they did (admittedly erroneously) was to align the date they contended Ms Hudson in fact first used the Katy Perry Mark in Australia with the date of the first alleged infringement.

181    The appellants contend that they do not resile from the factual position that the first use of the Katy Perry Mark on clothes occurred in October 2008 but they say that that is the wrong position legally for the purposes of the date at which the defence in s 122(1)(fa) is to be assessed. The correct date is the date of the first alleged infringement, which occurred on 24 October 2013.

182    The appellants contend that the proper framework for analysing whether the appellants can rely on the defence to s 122(1)(fa) is whether, at the time of the first alleged infringement (being 24 October 2013), the court is of the opinion Ms Hudson would have obtained registration of the Katy Perry Mark in her name if she were to apply for it. In other words, the defence is only relied upon when infringement is alleged, not the date when the mark was first used but which is outside the relevant limitation period.

183    The appellants submit that this approach is consistent with the reasoning of the Full Court in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6; 259 FCR 514 at [201]–[217] (Anchorage FC) (per Nicholas, Yates and Beach JJ) and Sensis at [58] (per Davies J), that the application of s 122(1)(fa) is to be assessed as at the date of the alleged infringing conduct.

184    Ms Taylor opposes the amendment application. First, she submits that it is contrary to the factual position advanced by the appellants at trial. According to Ms Taylor, at trial the appellants asserted that the first use of the Katy Perry Mark on clothes occurred via sales of clothing on the Bravado Website from 24 September 2008. The appellants relied on this date for the purposes of their s 124 prior use defence and to assert that Ms Hudson, not Ms Taylor, was the first user in Australia for an entitlement challenge under s 58, as well as to support their s 122(1)(fa) defence. We note that at trial, the appellants did not press their reliance on ss 58 and 124 of the Trade Marks Act.

185    Second, as accepted by the appellants, Ms Taylor submits that the proposed amendment is contrary to the legal position advanced by the appellants at trial. At trial, the appellants agreed that the question pursuant to s 122(1)(fa) was to be assessed as at the date of the first allegedly infringing use, accepted by them to be September 2008 in opening, or “late September or October 2008” in closing. On appeal, the appellants accepted the same until their oral reply.

186    Third, Ms Taylor submits that had the appellants advanced the case they now seek to advance at trial, Ms Taylor may well have conducted her case differently. In particular, there would have been a forensic contest as to the honesty of the appellants’ use of the Katy Perry Mark with effect from October 2013 (as distinct from 2008 or 2009), and Ms Taylor may have cross-examined Mr Jensen about that proposition directly. Given the appellants did not advance that case at trial, Ms Taylor did not do those things. Accordingly, the principles in Coulton v Holcombe [1986] HCA 33; 162 CLR 1 at 7–8 (per Gibbs CJ, Wilson, Brennan and Dawson JJ) apply:

… where, had the issue been raised in the court below, evidence could have been given which by any possibility could have prevented the point from succeeding … the point cannot be taken afterwards.

187    Ms Taylor would also have had the opportunity to address the primary judge about the merits of the legal position now sought to be advanced, including as to whether the limitation period ought to impact on identifying the date of the first otherwise infringing use.

188    Finally, Ms Taylor submits that to permit the proposed amendment now would cause her substantial prejudice. Given the timing, Ms Taylor submits that she has been deprived of the opportunity to address the Full Court as to the merits of the legal position the appellants now wish to raise, in written and oral submissions, on notice and in an orderly way. Ms Taylor contends that there are reasons why the appellants’ position is incorrect. For example, the fact that Ms Taylor is statute barred from seeking damages prior to 24 October 2013 (PJ at [378]), does not mean that, as a matter of fact, infringement did not occur prior to that time. Infringement occurs in the circumstances set out in s 120 of the Trade Marks Act, with which s 122(1)(fa) engages. In contrast to s 120(4) of the Patents Act 1990 (Cth), the Act does not place any limitation on the time in which an infringement action must be commenced. The imposition of a limitation period arises under State legislation: s 79 of the Judiciary Act 1903 (Cth) and ss 14(1), 23 of the Limitation Act 1969 (NSW). Ms Taylor submits that the reasons in each of Anchorage FC and Sensis, and the primary judge’s findings, are consistent with her position.

7.3    Consideration

189    The proposed amendment raises the question of whether for the purposes of the s 122(fa) defence, and indeed each of the s 122 defences, the relevant point in time to assess the matters which must be established for the defence to be made out, is the date of the actual act of pleaded alleged infringement in respect of which the defence is raised, not an earlier but statute barred act of allegedly infringing conduct.

190    The circumstances of the present case may, by reason of the period of allegedly infringing use beyond the limitation period, be one of the small number of cases in which the honest concurrent user defence may apply. This is discussed further below.

191    However, we do not consider that it is appropriate to grant leave to raise this substantive new point on appeal. The raising of the new point at an extremely late stage of the appeal (during oral reply) which is contrary to the legal and factual position accepted by the appellants at trial and during the balance of the hearing of the appeal, in circumstances where Ms Taylor contends that she will be substantively prejudiced in that she would have run her case differently, and been denied an opportunity to properly rebut the substance of the case to be put in the proposed amendment, means that the appellants should not be given leave to amend their further amended notice of appeal. Although the correct date at which to assess the defence is a legal question, Ms Taylor might well have run her case differently had the point been raised at trial, we accept, for example, by cross-examining Mr Jensen as to whether he continued to maintain his honest belief at the later date. By reason of the extremely late stage of the application, Ms Taylor was denied the opportunity to put on substantive legal argument as to why the proposed amended date is not the correct date before the primary judge and on appeal.

192    We refuse leave to permit the appellants to amend their further notice of appeal to substitute the date 24 October 2013 for the date October 2008 as the alleged date of first infringement.

7.4    Would the appellants obtain registration of the Katy Perry Mark for clothes (s 122(1)(fa))?

193    Section 122(1)(fa) of the Trade Marks Act posits a hypothetical trade mark application for the purposes of the Court determining whether, in its opinion, the appellants would obtain registration of a substantially identical or deceptively similar mark if such an application was made. As that assessment is done by reference to a hypothetical application, not by reference to an actual application, the time at which an actual application is made has no bearing upon the time at which the defence is to be determined: Sensis at [59] (per Davies J). The Full Court in Anchorage FC at [217] determined that the application of the defence in sub-s (fa) was to be assessed at the date of the alleged infringing conduct. As we have refused leave to amend the notice of appeal, that date is 26 June 2009.

194    The appellants’ defence under s 122(1)(fa) is based on s 44(3)(a) regarding the honest concurrent use of the Katy Perry Mark by the appellants. The primary judge found at PJ [701] that there was no honest concurrent use, and arguably no use at all, of the Katy Perry Mark in Australia beyond lodgement of Ms Hudson’s application for that mark on 26 June 2009. We observe that mere lodgement of an application for the registration of a trade mark is not use of the trade mark itself. The primary judge’s findings on this aspect of the case were directed, primarily, to the question of the honesty of use rather than the question of use itself.

195    The primary judge at PJ [693] set out the five non-exhaustive factors identified by Kenny J in McCormick which provide a guide for determining whether registration should be permitted pursuant to s 44(3) on the basis of honest concurrent use. These factors are listed at [149] above.

196    In Re Parkington & Co (1946) 63 RPC 171, it was observed that the honesty required was “commercial honesty, which differs not from common honesty”: at 182 (per Romer J). At [32] of McCormick, Kenny J quoted from the decision of Romer J in Re Parkington at 181–182, wherein Romer J emphasised the importance of the circumstances which attend the adoption of a trade mark in the first instance to the consideration of whether the use of that mark has or has not been an honest user. Romer J at 182 stated that “if the user in its inception was tainted it would be difficult in most cases to purify it subsequently”.

197    Romer J looked to the circumstances of the adoption of the mark and concluded that, even though the mark in question was adopted to develop the applicant’s trade rather than harm the trade of the opponents, its adoption was also accompanied by deliberate concealment: at 182 (per Romer J). Romer J found that the applicant’s secret adoption of the mark and secret use of the mark in the knowledge that the opponents would never have permitted the use or registration of a mark so similar to their own, was not commercial honesty. No subsequent conduct of the applicant could cleanse the “discreditable origin” of the user: at 183 (per Romer J).

198    McCormick was an appeal from a decision of the delegate of the Registrar of Trade Marks in an opposition to the registration of Ms McCormick’s marks. Ms McCormick’s marks were found to be deceptively similar to those of McCormick & Co, the applicant, and her goods were of the same description as those sold by the applicant. The delegate nevertheless found that Ms McCormick had successfully discharged her onus of establishing honest concurrent use of her mark in Queensland and NSW.

199    In McCormick, the respondent Ms McCormick, submitted that she was entitled to registration of her marks because of her honest concurrent use of them. Ms McCormick conceded that at the time she and her husband chose to use their surname as a mark for their instant batter product, she was aware that certain mixed herbs, paprika, pepper and basil products were sold under the applicant’s brand. Her evidence was that she did not think that her use of “McCormick’s” would result in any confusion as to the source of her and the respondent’s products because instant batter was a different product to the products which, according to her knowledge, were being sold by the respondent. Kenny J accepted that Ms McCormick’s adoption and use of her mark was honest, finding that the mere fact of knowledge of the other mark at the time Ms McCormick chose her mark did not preclude a finding that she acted honestly: McCormick at [33] (per Kenny J). In reaching her conclusion, Kenny J accepted that there was a likelihood of confusion from the use of the two marks in relation to overlapping goods.

200    In reaching her conclusion that Ms Hudson’s use of the Katy Perry Mark did not amount to honest concurrent use, the primary judge had regard to the factual matters set out at PJ [698]. These matters primarily related to the events leading up to Ms Hudson’s application to register her Katy Perry Mark in Australia, seven years after the adoption of the mark in the US, including: an unsuccessful attempt to negotiate a co-existence arrangement with Ms Taylor; Ms Hudson’s application for an extension of time to oppose the registration of Ms Taylor’s Mark; and the subsequent withdrawal of that application. These matters substantially overlap with the matters (set out at PJ [666]) considered by the primary judge in reaching her conclusion that Ms Hudson’s use of the Katy Perry Mark was use in good faith for the purposes of s 122(1)(a).

201    An important aspect of the primary judge’s conclusion that there was no honest concurrent use, was her finding (based on the seven matters set out at PJ [698]) that at the time she applied for registration of the Katy Perry Mark, Ms Hudson had knowledge of Ms Taylor’s Mark and she was in the middle of a “significant dispute about Ms Taylor’s entitlement to use and register” her (Ms Taylor’s) mark (PJ at [699]).

202    However, it was the combination of three factors that led the primary judge to form the opinion that there was no honest concurrent use at the date the Katy Perry Mark was first used:

(a)    the circumstances in which Ms Hudson first used the mark in Australia, including her knowledge of Ms Taylor’s Mark and that it presented a problem (PJ at [699]);

(b)    an absence of evidence to suggest that, at the time Ms Hudson’s TM Application was lodged, Ms Hudson held an honest belief that no confusion would result (PJ at [700]); and

(c)    an absence of any evidence of extensive use of the Katy Perry Mark in Australia in relation to clothes as at June 2009 (PJ at [700]).

203    The primary judge at PJ [699]–[701] considered that these factors outweighed the lack of any demonstrated confusion and the inconvenience that might favour registration of the Katy Perry Mark under s 44(3)(a). This led her to conclude that there was no honest concurrent use of the Katy Perry Mark as at the first date of the infringing conduct.

204    We consider that the primary judge did not err in concluding that the s 122(1)(fa) defence was not available on the basis that there was no concurrent use of the Katy Perry Mark at the relevant time that would support an application for registration under s 44(3). Therefore, there could be no honest concurrent use. However, we consider that the primary judge’s finding that the appellants could not demonstrate, in any event, honest use (assuming there to be use), was in error.