1 November 2009

Katy Perry vs Katie Perry

The well-known pop-star from "I kissed a girl" fame, Katy Perry, recently caused quite an uproar in the tabloids for allegedly threatening an Australian designer, coincidentally named Katie Perry, with legal action in respect of trade mark infringement. 

Katie Perry claimed she had received a letter from Katy Perry's lawyers demanding her to withdraw her application for the KATIE PERRY trade mark, cease trading under the KATIE PERRY trade mark and withdraw all goods incorporating the KATIE PERRY trade mark from the market. The basis for the infringement was based on Katy Perry's prior trade mark rights in and to the trade mark KATY PERRY.

Katie Perry has indicated publicly that she intends to defend any action which may be instituted against her by Katy Perry and also issued an emotional plea to Katy Perry in an internet video, urging the pop-star not to destroy her company. According to Katie Perry, she is merely using her own name as a trade mark to promote the goods she designed.

Although Katy Perry has denied that she has instituted any action against Katie Perry, she did confirm that the letter was sent to Katie Perry as is "customary trade mark practice".

It is not yet clear what the outcome of the matter is, but this does raise the interesting issue of the use by a person of his own name as a trade mark.

Section 34(2)(a) of the South African Trade Marks Act provides for an exception to trade mark infringement, and determines that a registered trade mark is not infringed by any bona fide use by a person of his own name.

This statutory defence does, however, not mean that a person may jump on the bandwagon and exploit the goodwill of a registered trade mark by the use his own name as a trade mark. For example, if your name happens to be Louis Vuitton, you will be prevented from using your own name as a trade mark in respect of hand bags. The exception afforded by section 34(2)(a) is only available in respect of the bona fide use of your own name. If the intention was to make use of another trader's goodwill generated in the name, such use of the name would not be regarded as bona fide. If there is any chance of deception being caused by a person by using his own name, the defence is similarly not available. It has been held in the past that the defence is also only available to the use of a person of his full christian name, or entire company name, and not only a surname or first name.

It is important to note that a person will not be precluded from using his own name in a bona fide descriptive manner (as opposed to use as a trade mark), despite a prior trade mark registration.

Should a matter like KATIE PERRY / KATY PERRY arise in South Africa, Katie Perry could rely on section 34(2)(a), but if Katy Perry could prove that Katie Perry's use is not bona fide, Katie Perry would be precluded from using her name as a trade mark. Katie Perry would, however, still be able to use another trade mark and highlight in advertising campaigns that the goods are "designed by Katie Perry".

Eben van Wyk, Director and
Regardt Botes, Associate,
Intellectual Property

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