Why have Katy Perry and Burger King shared a similar problem regarding trademarks in Australia

Despite not having much luck initially when trying to sue an Australian who shares the same name for trademark infringement, it looks like singer Katy Perry is appealing her claim once again against Australian designer Katy Perry (Taylor). 

Despite Taylor's initial victory and her fight for small businesses, Perry’s legal team seem adamant that they deserve the trademark despite what Australian courts think.

The dispute between Katy Perry and Katie Perry (Taylor) began in 2009. At that time, Katy Perry's representatives issued a cease-and-desist letter and attempted to take over the Australian-based brand "Katie Perry" which had been in operation since 2007. Katy Perry's team demanded that Taylor stop trading under that name, withdraw her clothes, and sign a document agreeing not to use the name again. Taylor refused to comply.

But in April of this year, Katy Perry was found guilty of infringing on the Australian trademark of Katie Perry (Taylor). As a result, the "TGIF" singer has now filed for an appeal after losing the case. The Australian Perry (Taylor) describes this legal battle as a "David and Goliath case" - where Katy Perry's legal resources are contrasted with her own limited means, Taylor was aided by an Australian firm, Litigation Capital Management Limited (LCM), that helps fund legal disputes.

But this isn’t the first time an American brand has come to Australia swinging litigation only to find themselves on the receiving end of a court down under giving preference to the Australian entity. Look no further as to Burger King’s attempt to take on their namesake - only to now have to be referred to as “Hungry Jacks” in Australia. 

What happened when Burger King tried to trademark their name in Australia?

In 1971, the American fast-food chain Burger King decided to expand into the Australian market. However, they encountered a problem when they realized that the trademark "Burger King" was already registered with an Australian business.

The Australian trademark for "Burger King" had been registered by a man named Jack Cowin, who established a chain of fast-food restaurants in Australia using the same name. Cowin's Burger King outlets were based in Perth, Western Australia.

Because of the existing trademark registration, American Burger King faced a legal barrier to using its name in Australia. They initially tried to negotiate with Jack Cowin to use the name under a franchise agreement, but negotiations didn't reach a favourable resolution.

As a result, Burger King decided to establish its presence in Australia under a different name. In 1971, they entered into a franchise agreement with Jack Cowin and his company Competitive Foods Australia. Burger King's outlets in Australia were named "Hungry Jack's" instead of "Burger King." The name "Hungry Jack's" was inspired by Jack Cowin's nickname, "Hungry Jack."

Why would Katy Perry have to trademark her own name in Australia?

Trademark laws come with a number of caveats, especially when it comes to territories. A look at the Australian Government’s website that shows intellectual properties and trademarks show that Katy Perry (the singer) has since trademarked her name along with some other trademarks in 2009 - however, only for Pre-recorded CDs featuring music (Class 9) and Entertainment services in the nature of live musical performances (Class 41.)

That means that regarding using the trademark for other brands, such as a line of fragrances, Perry would need to trademark the entire name through her Killer Queen, LLC in order to circumvent the curry trademark issues she has faced, which she has done with “PURR by Katy Perry” for example. 

That the Australian designer made her trademark filing in 2008, a year before the singer tried to trademark her name, meant that in the eyes of Australian courts, the designer had the right to the name - much the same as Jack Cowin did with Burger King back in the ‘70s