Recent high-profile disputes involving Jo Malone in the UK and the dispute between fashion designer Katie Perry and singer Katy Perry in Australia have recently highlighted the issues that can arise when individuals seek to exploit their names as brand assets, particularly when third parties hold registered trade mark rights or where rights have been previously assigned by contract. Across the beauty and fashion industries, the use of an individual's name as a brand identifier is common practice, although these cases highlight the complex reputational, legal and contractual issues involved, including the importance of implementing appropriate trade mark filing strategies and contractual foresight.

Katie Perry v Katy Perry^[1]

The High Court of Australia recently ruled in favour of fashion designer Katie Perry Taylor (the designer), trading as KATIE PERRY, in a long-running trade mark infringement dispute with Katheryn Hudson, better known as KATY PERRY (the singer).

The dispute started in 2009, when the singer challenged the designer's use of the name KATIE PERRY in relation to clothing and signalled plans to oppose her 2008 trade mark application. However, the opposition was later discontinued and the singer amended her own Australian application to exclude clothing goods.

Nevertheless, the singer continued to sell branded clothing in Australia, and in 2019, the designer commenced legal action against the singer following the sale of branded merchandise, including clothing, during the singer's Australian concert tour. The designer alleged that the sales infringed her registered trade mark and was successful in first instance at the Federal Court in 2023. The decision was later overturned on appeal in 2024, and the matter was subsequently appealed to the High Court.

Decision

The High Court upheld the designer’s appeal by a 3:2 majority, overturning the Federal Court’s ruling. The majority concluded that the KATIE PERRY trade mark should not be cancelled, with the decision considering three grounds of appeal:

1. First, the Court considered whether, at the time Katie Taylor applied to register the KATIE PERRY mark in 2008, the singer Katy Perry had already acquired a reputation in Australia, and if so, what the scope of that reputation was and whether it was sufficient to mean that the designer’s use of the mark would likely deceive or cause confusion. Significantly, the Court distinguished between the reputation of the trade mark in question and the reputation of the individual whose name it bears, noting that the singer's reputation as at the date the application was filed was limited to entertainment rather than clothing. This is an important point, and confirms that simply because an individual is globally recognised, their name will not extend trade mark protection to goods or services in the absence of actual use or reputation for those relevant goods or services.
2. Second, the Court examined whether, by 2019 and following a subsequent cancellation action, the circumstances had changed such that the designer's continued use of the KATIE PERRY mark had become likely to deceive or cause confusion. Here, Stewart J noted that confusion which occurred because of Katy Perry's continued infringing conduct should not be relied upon, as this would otherwise result in the conduct of an 'assiduous infringer' being rewarded.
3. Finally, the Court addressed whether, if either ground for cancellation was established, the discretion not to rectify the register could be exercised. However, given the prior findings, there was no need to consider such discretionary relief.

Estée Lauder v Jo Malone / Jo Loves & Zara^[2]

In the UK, Estée Lauder has brought High Court proceedings against perfumer Jo Malone, her brand Jo Loves, and Zara UK in relation to Malone’s use of her name in connection with a fragrance collaboration with the UK arm of Zara. The case alleges breach of contract, trade mark infringement, and passing off.

Malone sold her original brand, Jo Malone London, to Estée Lauder in 1999. As part of the sale, Malone agreed not to use the "Jo Malone" name for various commercial purposes, including the marketing of fragrances. The rights to commercialise the name were assigned to a corporate entity, Jo Malone Inc, which remains the registered proprietor of the relevant trade marks.

Estée Lauder alleges that (i) the wording displayed on the Zara products - “Created by Jo Malone CBE, founder of Jo Loves”- could mislead consumers into associating the products with Jo Malone London, thereby infringing Estée Lauder’s trade marks and amounting to passing off and (ii) Jo Malone has breached the contractual restrictions she agreed to when she sold her brand to them.

Under the UK's Trade Marks Act, individuals may use their own name in trade if consistent with honest commercial practices. However, courts have interpreted this defence narrowly, and the prior assignment of rights can significantly limit a founder’s ability to trade under their own name, particularly when reinforced by a restrictive covenant prohibiting the use of the name. . We expect the outcome will turn on the precise contractual terms of the sale, particularly the permitted and prohibited uses of Malone’s name.

As of April 2026, the dispute is on-going and there are no court documents publicly available. However, the proceedings provide a strong reminder of the long term effect of restrictive contractual terms in such agreements.

Key takeaways

Both cases illustrate the legal and practical issues businesses and individuals can face when commercialising personal names and brands, particularly across different jurisdictions. While future-proofing a brand can be challenging, careful consideration at the outset should be given to the goods, services and jurisdictions in which the brand will be used in both the near and long-term.

1. Reputation does not automatically confer trade mark rights

A celebrity’s global reputation does not automatically confer trade mark protection for unrelated goods or services. It is important to register trade marks for the specific goods or services in question. Further, it is essential to register trade marks strategically and to assess the scope of existing third party rights in each relevant market, rather than assuming fame alone will provide sufficient protection.

2. Likelihood of consumer confusion is context-dependent

A mark with a reputation in respect of particular goods or services may give rise to confusion if a similar mark is used for other goods or services. However, the assessment is highly fact-specific and depends on how the marks are actually used, the relevant consumer perception, and the timing of that use.

3. Contractual restrictions on the commercial use of a personal name

Contractual agreements may significantly limit how an individual's personal name can be used in future commercial activities. Founders and creators who assign trade marks or agree to name-related restrictions should carefully consider the long-term impact of those obligations, particularly where they intend to remain active in the same or adjacent sectors.

4. Personal names can be valuable commercial assets

Personal names, such as “Jo Malone” and “Katy Perry” can function as powerful brands. However, their scope of protection may differ depending on jurisdiction, product class, filing strategy and contractual arrangements. Effective brand protection requires alignment between trade mark registrations, commercial strategy, and contractual frameworks. Specialist legal advice from intellectual property experts should therefore be obtained at an early-stage to mitigate against future risks.

_{[1] Taylor v Killer Queen LLC [2026] HCA 5}

_{[2] Jo Malone INC and others v ITX UK Ltd and others (High Court, 11 March 2026, Claim No. IL-2026-000027)}