Killer Queen, LLC v Taylor [2024] FCAFC 149 | Case summary

Federal Court of Australia (Full Court)|2024-11-22|Before: Rofe JJ

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:

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.

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.

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.

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.

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.

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

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.

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]).

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.

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.

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

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.

6.2.1 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.

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.

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. 205 Knowledge of the earlier mark is not fatal to a finding as to honesty, particularly in circumstances where there is no "taint" to the adoption of the mark, and there is evidence as to an honestly held belief at the time of adoption of the mark in Australia that no confusion was likely to arise: McCormick at [33] (per Kenny J). 206 There is no taint accompanying Ms Hudson's adoption of the name 'Katy Perry' as her stage name at the outset. Like the mark in McCormick, Ms Hudson adopted her name - in this case her stage name, as her mark. The Katy Perry Mark was honestly adopted by Ms Hudson initially in the US in 2002, prior to her having any knowledge of Ms Taylor's Mark (PJ at [666]), indeed some five years prior to Ms Taylor starting her own label. Ms Hudson had performed, toured and developed merchandise under the mark in the US and multiple jurisdictions prior to gaining any knowledge of Ms Taylor's Mark. 207 Merchandise, including clothing bearing the Katy Perry Mark was first sold via the Bravado Website in October 2008, prior to Ms Hudson having any knowledge of Ms Taylor's Mark. That is evidence of an honest adoption and use of the Katy Perry Mark on clothing albeit, not in Australia, as the site was directed to the world at large, not specifically to Australian customers. 208 Mr Jensen became aware of Ms Taylor's Mark in May 2009. The primary judge found that, by that time, Ms Hudson had acquired a personal reputation in Australia as a popular music artist, and also a reputation in the Katy Perry Mark in relation to entertainment and music via use of the Katy Perry Mark in Australia in relation to her singles and albums (PJ at [725], [727], [728(3)], [728(5)], [741]). 209 It was not disputed that Mr Jensen had knowledge of Ms Taylor's Mark by the time Ms Hudson's application for registration of the Katy Perry Mark was lodged on 26 June 2009, in respect of goods in class 25, amongst other classes originally. This date was held to be the date on which the Katy Perry Mark was adopted in Australia in respect of clothing (PJ at [666], [689]). However, as the primary judge noted at PJ [723(9)], Ms Hudson had in 2008, sought to register the Katy Perry Mark in the US for apparel in class 25, before the priority date of Ms Taylor's Mark. 210 The highest point of the "significant dispute" as to Ms Taylor's entitlement involved Ms Hudson filing an application for an extension of time to oppose registration of Ms Taylor's Mark, which was later withdrawn, and some pugnacious lawyerly posturing demanding Ms Taylor withdraw her trade mark application. These events, and Mr Jensen's first awareness of Ms Taylor's Mark, are described by the primary judge commencing at PJ [129]. 211 The primary judge's comment as to the absence of evidence to suggest that Ms Hudson held an honest belief that no confusion would result sits uncomfortably with her statement to the opposite effect at PJ [666]: that "[c]ritically, Mr Jensen honestly believed that no confusion was likely to arise from the sale of clothes bearing Katy Perry's name", and the evidence summarised in the six sub-paragraphs to that paragraph. It can be seen from those sub-paragraphs that Mr Jensen held an honest belief that no confusion would result at the time he became aware of Ms Taylor's Mark, at the time the co-existence arrangement was proposed, at the time the extension of time application was withdrawn, after Ms Hudson's attempts at co‑existence had failed and at the time Ms Hudson made her own trade mark application (PJ at [179], [666]). 212 The proposal for a co-existence arrangement is consistent with Mr Jensen holding an honest belief that no one would be confused by the use of the Katy Perry Mark. The same can be said about Ms Hudson's withdrawal of the application for the extension of time. Mr Jensen was not concerned about letting Ms Taylor's Mark be registered as he did not consider that anyone would be confused. As the primary judge noted at PJ [146], to the extent that there might be any confusion, Mr Jensen thought it was possible that members of the public might confuse Ms Taylor's clothes with clothes with "Katy Perry" on them and that, if this occurred, it would not adversely affect Ms Taylor but might benefit her because of Ms Hudson's popularity in Australia. 213 Ms Hudson's deletion of class 25 goods from her own application in response to the adverse examination report is consistent with Mr Jensen's evidence that in mid July 2009 he formed the view that Ms Hudson's interests were best served by avoiding further publicity relating to Ms Taylor and by avoiding incurring unnecessary legal fees (PJ at [178]). It is also consistent with Mr Jensen's evidence that he did not consider that there was a risk of anyone being confused. 214 We consider that the Katy Perry Mark was honestly adopted and used by Ms Hudson in Australia on clothes and other merchandise. That conclusion sits comfortably with the primary judge's finding at PJ [666] that Mr Jensen (and thus Ms Hudson) had an honest belief that, at the time the Katy Perry Mark was adopted and first used in Australia on clothing, there was no risk of anyone being confused, taking into account the circumstances of the adoption of Ms Hudson's stage name in 2002, and the adoption of that name as a trade mark in Australia. It also sits comfortably with the primary judge's conclusion at PJ [705] that Ms Hudson was entitled to rely on the defence in s 122(1)(a)(i). 215 Whilst we consider that Ms Hudson's adoption of the Katy Perry Mark in Australia was honest, the primary judge was correct to find that as at 26 June 2009, there was no concurrent (non-infringing) use. However honest Ms Hudson's adoption and use of the Katy Perry Mark, on current authorities, the absence of any non-infringing concurrent use means that s 44(3) cannot provide the basis for a defence under s 122(1)(f) or (fa) of the Trade Marks Act, and appeal ground 2 must fail. 216 In Anchorage FC, the Full Court observed that s 122(1)(fa) does not provide any express indication as to the time at which the hypothetical trade mark application is taken to be made. After considering possibilities ranging from prior to the respondent's first use, to the date of the infringement hearing, Nicholas, Yates and Beach JJ observed at [217] (albeit in obiter) that s 122(1)(fa) is concerned with "the state of affairs in existence as at the date the alleged infringing conduct occurs". 217 As raised above in the discussion of the amendment application, if the hypothetical trade mark application were to be considered at the proposed amended date, the first pleaded act of actionable infringement, 24 October 2013, the position may well be different. However, that is not the case before us now. Moreover, given the manner in which the appellants conducted the trial before the primary judge and this appeal, we express no view as to the correctness of that date for the purpose of considering this ground of appeal.

USE OF OWN NAME (Appeal ground 1 and cross-appeal grounds 8 and 9)

218 By ground 1 of the appeal, the appellants contend that the primary judge erred in her construction of s 122(1)(a) in that, in their submission, a joint tortfeasor (here, Kitty Purry) can rely on the defence. 219 In this regard, the appellants submit that joint tortfeasors are jointly and severally liable for one tort, here the statutory tort of trade mark infringement. By reference to statements of principle in Thompson at 580-581 (per Brennan CJ, Dawson and Toohey JJ) cited in Baxter v Obacelo Pty Limited [2001] HCA 66; 205 CLR 635 (Baxter) at [18] (per Gleeson CJ and Callinan J, Gummow and Hayne JJ agreeing at [52]), they submit that liability in respect of joint tortfeasorship arises because of "a concurrence in the act or acts causing damage" and because the joint tortfeasors "act in concert in committing the tort" and are "responsible for the same wrongful act". The appellants submit that while, as a matter of fact, one or other joint tortfeasor may not physically engage in the primary act of infringement, each tortfeasor does as a matter of law. According to the appellants, this is enough to make the defence under s 122(1)(a) available to a joint tortfeasor. The appellants appear to submit, relatedly, that the word "person" in the chapeau to s 122(1) must include a joint tortfeasor because it would be incongruous to permit a person who would otherwise infringe to rely on the defence while denying the same defence to that person's joint tortfeasor. 220 The appellants also contend that the primary judge failed to consider the effect of s 122(1)(a)(ii) of the Trade Marks Act in her analysis. They submit that Ms Hudson, under the name "Katy Perry", was Kitty Purry's predecessor in business and that Kitty Purry had the benefit of the defence under s 122(1)(a)(ii) to the extent to which it used the "Katy Perry" name. 221 The appellants submit, further, that the defence is available to a person who trades in goods to which a manufacturer has placed its name, if the manufacturer itself can rely on the defence: Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corporation (1987) 8 IPR 285 at 290 (per King J). 222 By ground 8 of the cross-appeal, Ms Taylor contends that the primary judge erred in finding that Ms Hudson could rely on the defence. This is because, on 16 December 2011, Ms Hudson had assigned to Killer Queen all her "rights, titles and interests in and to" certain trade marks, including the Katy Perry Mark in Australia, and the goodwill attaching thereto. 223 Ms Taylor submits that, as a consequence, Killer Queen could, potentially, rely on the defence in s 122(1)(a)(ii) (as Ms Hudson was Killer Queen's predecessor in business) but Ms Hudson could not herself rely on the defence in s 122(1)(a)(i). 224 In this regard, Ms Taylor submits that s 122(1)(a) is "only available to one person operating one business at a time". She submits that this is the necessary consequence of the provision's use of the expression "predecessor in business". According to Ms Taylor, the notion of replacement is inherent in the meaning of "predecessor". Here, Killer Queen "replaced" Ms Hudson in the conduct of a business using, inter alia, the Katy Perry Mark. Thus, according to Ms Taylor, Ms Hudson could not rely on the defence in s 122(1)(a)(i). 225 It is apparent from Ms Taylor's argument that, in her view, the availability of the defence under s 122(1)(a) is confined to a consideration of who, over time, is operating a business: is the business being conducted by a person using their own name or is the business being conducted by another person (a successor in business) using the first person's name? Ms Taylor argues that both cannot be operating the same business at the same time. 226 By ground 9 of the cross-appeal, Ms Taylor contends, in respect of Ms Hudson's reliance of the defence, that the primary judge erred in finding that "the person's name" in s 122(1)(a) means the name by which that person is known. In this regard, the primary judge found that Ms Hudson was known as "Katy Perry" and that this was the relevant name (the name by which she was known) for the purpose of considering the defence under s 122(1)(a)(i) in the present case. 227 In this regard, Ms Taylor contends that, notwithstanding judicial observations to the contrary in Mercury Communications Limited v Mercury Interactive (UK) Limited [1995] FSR 850 at 860 (per Laddie J) and in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110; Bus LR 1465 at [66] (per Lloyd LJ, Burnton and Jacob LJJ agreeing at [125]-[126]), the defence in s 122(1)(a) is not available in relation to the use by a person of an adopted name, even though that is the name by which that person is known. 228 In support of that contention, Ms Taylor submits that the defence in s 122(1)(a) applies to natural persons and legal persons alike. Ms Taylor submits that authority in relation to the use of corporate names shows that the "own name" defence in s 122(1)(a)(i) is narrowly applied in relation to the corporation's registered name: see, for example, SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1027; 45 IPR 169 at [43] (per Wilcox J); Harcourts at [294]-[301] (per McKerracher J); Anchorage FC at [206]-[208] (per Nicholas, Yates and Beach JJ). 229 Ms Taylor submits that similar restraint must apply to a natural person. According to her, the "own name" defence in s 122(1)(a)(i) must, at least, be limited to a natural person's "legal name". It is not enough for a person to rely on the name by which he or she is known. 230 In aid of her submission, Ms Taylor referred, in oral submissions, to various provisions of the Births, Deaths and Marriages Registration Act 1995 (NSW) (the NSW Registrations Act) concerning the obligation to register the birth of child born in New South Wales, by name, as exemplifying the proposition that a natural person has a "legal name". Ms Taylor also referred to other provisions of the NSW Registrations Act (namely s 27) concerning applications to register a change of a person's name where: (a) the person's birth is registered in New South Wales; or (b) where the person is not born in Australia, the person's birth is not registered in Australia, and the person has been resident in New South Wales for three consecutive years. 231 Ms Taylor submits that, unless the "own name" defence in s 122(1)(a)(i) is not confined to use of a person's "legal name" - the name by which the person is registered - the scope of the defence will be unclear. Moreover, it would mean that, potentially, a person could have recourse to the defence under different names.

232 We commence by considering ground 1 of the appeal. 233 The primary judge did not err in finding that Kitty Purry could not rely on the defence in s 122(1)(a). The availability of the defence is confined by the words in which it is expressed. The defence is only available to a person who (in good faith) "uses": (a) the person's name or the name of that person's place of business; or (b) the name of that person's predecessor in business or the name of that person's predecessor's place of business. There is no warrant for extending the defence beyond the terms in which Parliament has chosen to express it. 234 The fact that Bravado used the Katy Perry Mark, and thereby became liable for infringement of Ms Taylor's Mark under s 120(1) of the Trade Marks Act, does not mean that, through joint tortfeasance, Kitty Purry is taken to have also "used" the Katy Perry Mark for the purposes of s 120(1). It is not correct to say, as the appellants submit, that, by reason of joint tortfeasance, each joint tortfeasor "uses" a sign as a trade mark "in law" even if each does not use the sign as a trade mark "in fact". 235 The primary judge made no finding that Kitty Purry, itself, used the Katy Perry Mark (or any other infringing sign), even though Bravado did. Liability was attributed to Kitty Purry by reason of other acts. It follows that Kitty Purry could not bring itself within either s 122(1)(a)(i) or s 122(1)(a)(ii). 236 Further, so far as s 122(1)(a)(ii) is concerned, Ms Hudson was not Kitty Purry's predecessor in business. A person does not become a second person's predecessor in business simply because the second person carries on a business that uses the trade indicia of, or associated with, the first person's business. In any event, as we have noted, on 16 December 2011 Ms Hudson assigned to Killer Queen all her "rights, titles and interests in and to" certain trade marks, including the Katy Perry Mark in Australia, and the goodwill attaching thereto. Arguably, by reason of that assignment, Ms Hudson was Killer Queen's predecessor in business in relation to the Katy Perry Mark in Australia. She was not, however, Kitty Purry's predecessor in business. 237 As to the appellants' reliance on the decision in Smith & Nephew, we simply observe that the facts of that case are not analogous to the facts of the present case insofar as they concern Bravado and Kitty Purry. For one thing, Bravado was the person who applied the Katy Perry Mark to the goods in question. Plainly, Bravado's name was not "Katy Perry". 238 Further, despite the observations made in Smith & Nephew as to the possible extended operation of s 64(1)(a) of the Trade Marks Act 1955 (Cth), we are unable to read s 122(1)(a) of the Trade Marks Act as capable of being invoked as a defence by a person who acquires goods from another who can rely on the defence. The defences under s 122 are closely confined to particular persons in particular circumstances: Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 at [638] (per Yates J). However, as the primary judge correctly acknowledged at PJ [632], a person cannot be liable for trade mark infringement as a joint tortfeasor with another, where the other person relies successfully on the defence. 239 For these reasons, ground 1 of the appeal is not established. 240 It is convenient to deal, next, with ground 9 of the cross-appeal concerning the availability of the "own name" defence in s 122(1)(a)(i) to Ms Hudson's use of the name "Katy Perry". 241 We are not persuaded that the primary judge erred in finding that Ms Hudson could rely on the defence. We accept that the "own name" defence in s 122(1)(a)(i) can apply to a person's use of an adopted name. We do not think that the "corporation name" cases to which Ms Taylor refers stand for the contrary proposition. 242 In SAP, Wilcox J referred to Parker-Knoll Ltd v Knoll International Ltd (No 2) [1962] RPC 265, at 275 where Lord Denning referred to the history of s 8(a) of Trade Marks Act 1938 (UK), which relevantly provided that "no registration of a trade mark shall interfere with … any bona fide use by a person of his own name …". Lord Denning reasoned that the company called Knoll International Limited was entitled to the protection of that provision: The protection extends to the defendant's use of their own name, "Knoll International Limited", and also to the natural abbreviation of it to "Knoll International" omitting the word "Limited". But I would not extend the protection so as to authorise the further abbreviation to "Knoll" alone without the word "International". The user which is protected is the honest user of a man's ordinary name - the name by which he is usually known. A further abbreviation, which reduces it to less than his ordinary name, is not protected if the likelihood of confusion is thereby increased. 243 The guiding principle stated by Lord Denning was that the use protected by the provision was "the honest use of a man's ordinary name", which he identified as "the name by which he is usually known". Plainly, in the passage quoted above, Lord Denning was not confining the availability of the defence to the use of a person's "legal name" (or, in that case, the company's registered name). 244 This is important because it puts in context the reason for finding that, in that case, the provision protected the company's use of "Knoll International" but not "Knoll". Lord Denning's reason could only have been that the name "Knoll International" was the name by which the company was known, not its contraction "Knoll". Had Lord Denning applied the principle for which Ms Taylor contends - namely, that the defence only applies to a person's "legal name" (in the case of a corporation, its registered name) - then Lord Denning would not have found that the provision protected the company's use of the name "Knoll International", because that name was not the company's registered name. 245 It was this reasoning that informed Wilcox J's obiter finding in SAP (at [43]) that s 122(1)(a) protected a company's use of the name "Sapient Australia" (the company's registered name was Sapient Australia Pty Ltd) and not "Sapient" or "Sapient Corporation". 246 Although in Harcourts McKerracher J did not refer to Parker-Knoll, the same reasoning is evident. His Honour contemplated (at [301]) the possibility that the use in good faith of the name "Roy Weston Nominees" by a company registered as Roy Weston Nominees Pty Ltd might be protected by s 122(1)(a)(i). However, his Honour was not prepared to accept that the use of the names "Roy Weston" and "Roy Weston Real Estate" would be protected. This was because those names could not be characterised as a use of the name Roy Weston Nominees Pty Ltd. 247 The obiter reasoning of the Full Court in Anchorage FC is to the same effect. In that case the Full Court (at [207]-[208]) referred to the reasoning in Parker-Knoll and SAP (as well as in Smith & Nephew at 290, which also referred to Parker-Knoll) in finding that the "own name" defence in s 122(1)(a)(i) would protect the use of the name "Anchorage Capital Group" by a company registered as Anchorage Capital Group LLC, but not "Anchorage" simpliciter or the name "Anchorage Capital". 248 The findings in SAP and Anchorage FC (and, arguably, in Harcourts) as to the scope of the "own name" defence in s 122(1)(a)(i) must be understood by reference to the guiding principle in Parker-Knoll to which we have referred. The protection is given to the use by a person of the name by which that person is usually known. None of these cases deny the applicability of the "own name" defence to an adopted name, if that is the name by which the person is usually known. Indeed, in Mercury Communications, Laddie J (at 861) saw Lord Denning's guiding principle as supporting the protection of a person's use of an adopted name. As Laddie J explained: It is difficult to see what purpose would be served by merely allowing a man to trade under the name set out on his birth certificate but not the name by which he is actually known. 249 In trade, Ms Hudson was usually known by the name "Katy Perry". There is no reason why, in principle, the "own name" defence in s 122(1)(a)(i) cannot apply to her use in good faith of that name. 250 As to ground 8 of the cross-appeal, the primary judge did not err in finding that Ms Hudson could rely on the "own name" defence in s 122(1)(a)(i) even though she had assigned her Australian trade mark rights to the Katy Perry Mark, and the goodwill attaching thereto, to Killer Queen. 251 We do not accept that the availability of the defence is overlain by the considerations to which Ms Taylor refers, which add glosses to the statutory language. The defence in s 122(1)(a) has effect according to its terms. It does not depend on whether, here, Ms Hudson assigned rights to Killer Queen or who, out of Ms Hudson and Killer Queen, is or was operating a business. It depends on whether Ms Hudson's allegedly infringing conduct was a use by her (in good faith) of her name. The inquiry under s 122(1)(a)(i) is no more complicated than that, as the primary judge correctly recognised at PJ [614] and [648]. Put another way, the defence regulates rights as between the registered owner of a trade mark and an alleged infringer. It is not concerned with the rights, if any, between the alleged infringer and other persons in respect of the use of the alleged infringer's name. 252 For these reasons, grounds 8 and 9 of the cross-appeal are not established.

CANCELLATION OF THE KATIE PERRY MARK (Appeal grounds 3 and 4) 253 The appellants challenge the primary judge's rejection of their cross-claim to cancel Ms Taylor's Mark under s 88(2)(a) pursuant to ss 60 and 88(2)(c) of the Trade Marks Act.

9.1.1 Section 88(1)(a) pursuant to s 60 (ground 3) 254 To succeed under s 60, the appellants had to establish a reputation in the Katy Perry Mark in Australia before the priority date of Ms Taylor's Mark, and that because of that reputation the use of Ms Taylor's Mark would be likely to deceive or cause confusion. The relevant date for the assessment is at the priority date of Ms Taylor's Mark. 255 The primary judge at PJ [712] extracted Stewart J's summary of the principles relevant to the application of s 60 from Monster Energy Company v Mixi Inc [2020] FCA 1398; 156 IPR 378 at [13]-[22]. Stewart J commenced his summary of the relevant principles by observing that the purpose of s 60 is to provide protection for well-known marks, whether registered or not, by preventing registration of a trade mark if there is a likelihood of deception or confusion because of the reputation of the well-known mark in Australia as at the priority date. 256 At PJ [723], the primary judge set out the evidence relied upon by Ms Hudson to establish reputation in the Katy Perry Mark prior to the priority date. Much of this evidence related to the international success and popularity of Ms Hudson's singles and albums under her name Katy Perry since June 2005. The primary judge noted Ms Taylor's acceptance that from July 2008, Ms Hudson was an internationally famous pop star. Earlier, at PJ [138], the primary judge recorded Ms Taylor's acceptance that at September 2008 she knew that music artists sold clothes bearing their names at concerts. 257 The primary judge found at PJ [725] that the sale of music by reference to Katy Perry was use of the name Katy Perry as a trade mark. At PJ [727], the primary judge observed that whilst the media coverage (as set out at PJ [723]) did not constitute use of a trade mark, it included numerous references to Ms Hudson's "Katy Perry" stage name under which she sold her singles and albums and to that extent it referred to the Katy Perry Mark, and evidenced the extent of Ms Hudson's reputation in Australia before the priority date. 258 Notwithstanding that she had found that the Katy Perry Mark had a reputation in Australia before to the priority date (PJ at [727], [729], [740] and again at PJ [752]) the primary judge concluded that she was not satisfied that because of that reputation, the use of Ms Taylor's Mark was likely to deceive or cause confusion. Her Honour set out the reasons for her conclusion at PJ [741]-[752]. In summary, the primary judge noted the following: (a) The reputation in the Katy Perry Mark was in relation to music and entertainment (PJ at [741]); (b) The primary judge did not consider that clothes were related to entertainment and music, despite observing that music stars such as Ms Hudson lend their names (and trade marks) to be used in connection with clothes and merchandise sold at their concerts (PJ at [742]); (c) There was no evidence of actual confusion which told against the existence of any deception or confusion in any person, particularly as Ms Taylor had first used her mark in relation to t-shirts as early as July 2008 (PJ at [743]); (d) As submitted by the appellants in relation to their s 122(1)(fa) defence, no confusion was likely to arise (PJ at [744]); (e) At the priority date Ms Taylor's business was a small business (PJ at [745]); (f) The comparison is with a notional and normal fair use of Ms Taylor's Mark on the registered goods, rather than with the lack of reputation in that mark (PJ at [745]); (g) While the Katy Perry Mark and Ms Taylor's Mark are the same aurally, they differ, albeit slightly, visually, and even when affixed to the same types of clothing a performer such as Ms Hudson might offer for sale and sell, they would not cause deception or confusion (PJ at [751]); (h) The difference in spelling of "Katie" is immediately apparent and the "more conservative appearance" of Ms Taylor's Mark differentiates it from the Katy Perry Mark (PJ at [751]); (i) Unlike the clothes sold by Ms Taylor, those sold by the appellants rarely bear only the Katy Perry Mark. Often the mark is accompanied by graphics or photos of Ms Hudson (PJ at [751]). 9.1.2 Section 88(2)(c) (ground 4) 259 Killer Queen and Ms Hudson also contend that Ms Taylor's Mark should be cancelled under s 88(1)(a) of the Trade Marks Act on the ground set out in s 88(2)(c). That is, they contend that because of circumstances applying at the time when the cross-claim was filed, 20 December 2019, the use of Ms Taylor's Mark by Ms Taylor was likely to deceive or cause confusion. 260 At PJ [776], the primary judge extracted Nicholas J's summary of the relevant principles in Dunlop Aircraft Tyres Ltd v Goodyear Tire & Rubber Company [2018] FCA 1014; 262 FCR 76, commencing at [174]-[178] and [180]-[181], which were in turn taken from Kitto J's summary of principles in Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1953) 91 CLR 592 at 594-5. Southern Cross Refrigerating was a trade mark opposition, not a cancellation case. 261 The primary judge observed at PJ [785] that it was not in dispute that, by the date of the filing of the cross-claim (20 December 2019), Ms Hudson had achieved international fame and that the Katy Perry Mark had a significant reputation. At PJ [786], the primary judge noted that it was fair to say that, as at December 2019, Ms Taylor was far less well known than Ms Hudson and, by comparison, Ms Taylor and her mark had a much lesser reputation and little public presence. 262 The primary judge held at PJ [788] that it was "certainly arguable that given Ms Hudson's heightened reputation by December 2019 a probable purchaser may be caused to wonder whether there might be a connection between clothes bearing [Ms Taylor's] Mark and Ms Hudson". The basis given by her Honour for her statement was the level of similarity between the two marks and because, by December 2019, Ms Hudson had a significant reputation. 263 However, her Honour found Ms Hudson to be "a victim of her own success", concluding at PJ [789] that the use of Ms Taylor's Mark on clothes was not likely to deceive or cause confusion. Two matters led the primary judge to her conclusion. Those matters were: (a) The total absence of any actual confusion despite both Ms Taylor and Ms Hudson having traded by reference to their respective marks for some 10 years (PJ at [790]). The primary judge considered this to be of some persuasion although not decisive. (b) The strength of Ms Hudson's reputation and the reputation in the Katy Perry Mark which the primary judge held to be a compelling reason why a person would not be caused to wonder whether clothes bearing Ms Taylor's Mark were from the same source as those bearing the Katy Perry Mark (PJ at [791]). 264 The primary judge considered that her conclusion was consistent with the conclusions reached in Singtel Optus Pty Ltd v Optum Inc [2018] FCA 575; 140 IPR 1 and Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd [2015] FCA 1065; 115 IPR 82, concluding at PJ [794] that the differences between the respective trade marks are limited, but as was the case in Delfi Chocolate, the consumer faced with the goods in issue (clothes), and giving the matter a moment's reflection, would conclude that the clothes in question did not come from the same source as clothes bearing the Katy Perry Mark. The primary judge concluded that this was because of Ms Hudson's significant reputation and that of the Katy Perry Mark as at December 2019. In describing Ms Hudson as a "victim of her own success", the primary judge cited: Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; 81 IPR 354 at [32] (per Perram J), an infringement and passing off case. 265 Given her conclusion that Killer Queen and Ms Hudson had not made out any of the grounds of cancellation of Ms Taylor's Mark under s 88, the primary judge did not consider it necessary to consider the question of whether to exercise her discretion to make a cancellation order.

9.2 The submissions - s 88(2)(a) pursuant to s 60 (Appeal ground 3)

266 The appellants challenge the primary judge's conclusion at PJ [753] that, notwithstanding her finding that the Katy Perry Mark had a reputation in Australia at the priority date (see PJ at [727]-[729]), she was not satisfied that the use of Ms Taylor's mark was likely to deceive or cause confusion. 267 The appellants contend that the primary judge erred in placing undue weight on the fact that there was no evidence of any instances of actual confusion as at the priority date. The appellants contend that evidence of actual confusion is not required in order to succeed under s 60, and the absence in this case is explicable. The evidence showed that Ms Taylor's use of her mark as at the priority date was extremely minor, and subsequently that use was very modest. In those circumstances, the lack of evidence of actual confusion is both unsurprising, and conveys little about the likelihood of such confusion arising from any notional use of Ms Taylor's Mark as at the priority date. 268 The appellants submit that the primary judge erred in her consideration of the notional fair use of Ms Taylor's Mark. In particular, in making her findings as to the differentiating role of the small difference between the marks: "Katy" v "Katie", the primary judge appeared to overlook the parties' agreement that the marks were deceptively similar. In addition, in having regard to how the Katy Perry Mark has been used on clothes after the priority date, the primary judge failed to consider the position as at the priority date. 269 The appellants further contend that the strength of the reputation in the Katy Perry Mark, albeit in entertainment and music rather than clothes, enhanced the likelihood of confusion at the relevant time. According to the appellants, there is ample evidence showing that it is common for celebrities to launch clothing lines, with Ms Taylor also conceding this in cross-examination (PJ at [735]). Any notional normal and fair use of Ms Taylor's Mark would include use on the sorts of clothes generally sold by touring music artists and performers, such as t-shirts. 270 The respondent contends that by this ground of appeal, the appellants are seeking to have this Court substitute its factual finding for that of the primary judge. Each of the findings made by the primary judge were available on the evidence before her and should not be the subject of interference by this court.

271 The primary judge found that the Katy Perry Mark had a reputation prior to the priority date of Ms Taylor's Mark, however, despite that reputation, the primary judge was not satisfied that because of that reputation, use of Ms Taylor's Mark was likely to deceive or cause confusion. The reasons for that conclusion are set out above. 272 Section 88(2)(a) of the Trade Marks Act provides that an application for cancellation of a trade mark may be made on any of the grounds on which the registration of the trade mark could have been opposed. One of those grounds is s 60 of the Trade Marks Act. 273 Section 60 was amended by the Trade Marks Amendment Act 2006 (Cth) to remove an express requirement in para (a) to the opposed mark being "substantially identical or deceptively similar" to the earlier mark that benefitted from the reputation. Post amendment, s 60 places the focus on the reputation of the earlier mark and extends the operation of the section to marks that are so well known that, by reason of their reputation, use of the opposed mark would be likely to deceive or cause confusion, even if it was not deceptively similar to the well-known mark. 274 Section 60 involves a two-stage enquiry. First, whether an earlier mark (in this case the Katy Perry Mark) to the mark sought to be opposed (in this case Ms Tayor's Mark) had acquired a reputation in Australia. Second, whether because of that reputation, the use of the mark sought to be opposed would be likely to deceive or cause confusion. 275 Even if the conflicting marks are not deceptively similar, the s 60 objection may be established if the reputation of the first mark is such that use of the opposed mark is likely to result in a real risk of confusion in the trade mark sense. That is not to say that the question of the degree of similarity between the allegedly conflicting marks will be irrelevant. It is a material consideration. However, the standard set by s 60 focusses attention on the reputation of the first mark: see Qantas Airways Limited v Edwards [2016] FCA 729; 338 ALR 134 at [141]-[143] (per Yates J); Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923; 370 ALR 140 at [83], [84] (per O'Bryan J); McD Asia Pacific LLC v Hungry Jack's Pty Ltd [2023] FCA 1412; 175 IPR 397 at [143] (per Burley J). Where the conflicting marks are not deceptively similar, the strong reputation of a well-known mark may enhance the prospect that no consumers are likely to be confused: Delfi Chocolate at [29] (per Jessup J). 276 Reputation in the context of s 60 involves the recognition of the earlier trade mark by the public generally: McCormick at [81] (per Kenny J). 277 There is no statutory requirement that the reputation in the earlier mark be specific to the goods or services the subject of the opposed mark. 278 The standard of "confusion or deception" under s 60 is the same as under s 44(1) of the Trade Marks Act, namely, it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient: Qantas Airways at [130], [145] (per Yates J). 279 The relevant comparison for considering whether use of the opposed mark is likely to deceive or cause confusion is between the reputation of the prior mark (in this case the Katy Perry Mark) derived from the actual use of that mark, and a notional normal and fair use of the mark sought to be opposed (Ms Taylor's Mark) across all of the goods or services for which registration is sought; ie the statutory rights of use in the opposed mark: Qantas Airways at [167] (per Yates J). 280 The primary judge found at PJ [725], [741] that the Katy Perry Mark was used as a trade mark in Australia in relation to entertainment and music before the priority date of Ms Taylor's Mark, and at PJ [729] that reputation in that mark had been established. The primary judge considered that the reputation in the Katy Perry Mark was limited to music and entertainment and had no reputation in clothing (PJ at [742]). 281 In the view of the primary judge, clothes are not related to entertainment and music. This was despite evidence, acknowledged by the primary judge at PJ [742], that popular music stars such as Ms Hudson lend their names (and trade marks) to be used in connection with clothes and sell merchandise at their concerts. Ms Taylor's accepted such conduct as a common practice (PJ at [735]). There was also evidence before the primary judge that fashion is "a common area into which celebrities launch brands" (PJ at [137]). A parallel may be drawn between this practice and that of a brand extension. According to the primary judge, that practice did not make a reputation in one thing; ie entertainment and music, related to another; ie clothing. 282 By the priority date, Ms Taylor accepted that Ms Hudson was a nationally and internationally famous pop star. Ms Hudson had released several singles and an album which had achieved significant exposure in Australian media, the singles had been played on Australian radio, and each had achieved a level of popularity given their respective rankings on the Australian music charts (PJ at [724]). At PJ [727], the primary judge referred to the media coverage relied upon by Killer Queen and Ms Hudson which included numerous references to Ms Hudson's stage name, "Katy Perry" and observed that such references did not constitute trade mark use, but they evidenced the extent of Ms Hudson's reputation before the priority date. That reputation was in the name "Katy Perry". 283 The primary judge acknowledged at PJ [731] that it was not necessary to establish a reputation in respect of the particular goods and services of the mark sought to be opposed. She observed, however, that the distinction between those goods and services and those of the earlier mark may be a relevant matter to consider. The primary judge referred to her own observations at [148] in GAIN Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA 519; 123 IPR 234, that where an opponent has a reputation in particular goods or services but that reputation does not encompass the goods or services for which registration is sought, that may be a basis for a finding that s 60 is not made out, citing Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94; 214 FCR 396 (per Lander J) in support. Both cases are distinguishable from the present case. Neither GAIN nor Hills Industries involved well-known marks or the use by an internationally famous person of their name as a trade mark. The reputations of the marks in both cases were industry and product specific, and there was no evidence of any related reputation or any practice of brand extension. 284 In Hills Industries, a case under the unamended form of s 60 of the Trade Marks Act, dealing with television set-top boxes and installation accessories, Lander J found at [197] that the DGTEC mark had only been used on set-top boxes and had not acquired a reputation in Australia of the kind that is contemplated in s 60. The evidence was that there had been no brand extension beyond the set-top boxes which were a "unique" product: Hills Industries at [188] (per Lander J). Although given his finding on reputation, it was not necessary for him to consider whether, if the DGTEC mark had acquired a sufficient reputation, the use of the DIGITEK mark would be likely to deceive or cause confusion, Lander J made some brief observations. 285 Assuming, contrary to his finding, that the DGTEC mark had acquired a sufficient reputation, it had only acquired a reputation in respect of set-top boxes. In the niche and specialist market in Hills Industries, Lander J found at [208] that the use of the DIGITEK mark in respect of television installation accessories (excluding external antennas) was not likely to deceive or cause confusion because those goods were unrelated to a set-top box. The DIGITEK registration specifically excluded set-top boxes from its registration. 286 The primary judge also referred to Davies J's comments at [203] of Singtel Optus that s 60(b) is unlikely to be satisfied unless the reputation applies to the goods and services the subject of the opposed mark. In Singtel Optus, the respondent accepted that the OPTUS mark had a reputation in Australia in respect of telecommunication services, but contended that the reputation did not extend beyond telecommunications goods and services. Davies J accepted that contention, finding on the evidence that public awareness and appreciation of the OPTUS mark did not extend beyond telecommunications goods and services and incidental services, to other services such as healthcare services (at [201]). The marks in Singtel Optus were not deceptively similar (at [138]). 287 Having found that the Katy Perry Mark had acquired a reputation in Australia, the primary judge moved to consider the second stage of the enquiry: whether because of that reputation, the use of Ms Taylor's Mark would be likely to deceive or cause confusion, concluding at PJ [753] that she was not satisfied that because of the reputation in the Katy Perry Mark, use of Ms Taylor's Mark would be likely to deceive or cause confusion. 288 With respect, we consider that the primary judge erred in reaching her conclusion. In coming to our conclusion we keep in mind that, in undertaking an analysis of questions of fact and degree, involving matters of judgment, minds may well differ on the result. A mere difference in opinion as to the result does not mean that appealable error is involved in the judgment under appeal. In the present case, there are four matters which strike at the conclusion the primary judge reached and which lead us to conclude that the primary judge's assessment was affected by error. We deal with each in turn. 289 First, the primary judge unduly confined the reputation of the Katy Perry Mark. Ms Hudson, under her stage name "Katy Perry" was by the priority date an internationally famous pop star (PJ at [723(8)]). By reason of her fame and success as an international entertainer, there would be recognition of the name Katy Perry by the public generally: McCormick at [81]-[82] (per Kenny J). The reputation in her name was of necessity a reputation in her name as a mark. 290 We consider that it was artificial to excise and disaggregate the reputation of Katy Perry, the entertainer, from the reputation in the Katy Perry Mark for the purposes of the s 60 enquiry. To confine the reputation in the mark to music and entertainment overlooked relevant evidence. 291 In concluding that the Katy Perry Mark did not have a reputation in clothes, the primary judge ignored the common practice of pop stars to sell merchandise including clothing at concerts and to launch their own clothing labels. Ms Taylor accepted that in September 2008, it was commonplace for musical artists to put out items of clothing bearing their names and likenesses. Ms Taylor gave as examples such as Gwen Stefani and Jennifer Lopez, observing that "now obviously there's like, Rihanna and - they've kind of exploded". Further support for this proposition is found in: (a) Mr Jensen's evidence that in addition to merchandise associated with concerts and performances, artists license their name, or another name or brand they own, as a brand for merchandise, including clothing, and other fashion items such as footwear, cosmetics, fragrances and other goods. Mr Jensen gave as examples Rihanna, Jennifer Lopez, Beyoncé and Gwen Stefani. (b) an article published in the 16 June 2009 issue of The Australian newspaper relied on by Ms Taylor: Fashion is a common area into which celebrities launch brands, with singers including Jennifer Lopez and Gwen Stefani launching their own fashion labels. "A lot of US popstars are moving into all sorts of merchandising,"…"Clothing is an obvious one for popstars.." 292 Second, it was common ground that the Katy Perry Mark and Ms Taylor's Mark were deceptively similar. As both are two-word, word marks, that are aurally identical and differ only by one letter ("ie" v "y"), that concession is properly made. The two Katie/y Perry Marks are to be contrasted with, for example, MEGA MAC and MEGA JACK, which are not aurally identical and where the change from "M" to "J" changes the second name and makes a significant difference: McD Asia at [124] (per Burley J). Section 10 of the Trade Marks Act provides that a mark is taken to be "deceptively similar" to another mark "if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion". 293 Notwithstanding that common ground, the primary judge proceeded to conduct her own comparison of the two marks at PJ [751], highlighting differences between the marks. While noting that the two marks were aurally the same, the primary judge emphasised the visual difference (albeit very slight), between the two marks and concluded "even when affixed to the same types of clothing a performer such as Ms Hudson might offer for sale and sell, they would not cause deception or confusion" (PJ at [751]). This finding, at odds with the common position, was said to be due to the difference in the spelling of "Katie" which was "immediately apparent" and the "more conservative" appearance of Ms Taylor's Mark. As both marks are word marks, the reference to "more conservative" appearance can only be to the spelling of the first name with an "ie" rather than with a "y" and could not be to any particular representation of the mark. 294 In our respectful view, the difference in spelling of "Katy" v "Katie" does not take the aurally identical word marks beyond deceptive similarity. Nor in our view is the difference in spelling "striking". Nor was there any evidence that "Katy" is an "unusual" spelling of the name. Whilst some die-hard fans of Ms Hudson may recognise the incorrect spelling, the ordinary consumer with an imperfect recollection of the Katy Perry Mark confronted with a garment with Ms Taylor's Mark on it would be likely to be confused as to the source of the item and wonder whether it was associated with Ms Hudson. 295 Although there is no longer a requirement for deceptive similarity under s 60, the close similarity of the two marks under consideration is highly relevant as to whether or not there is a likelihood of confusion. In the case of almost identical word marks, the likelihood of confusion is likely to be heightened if the earlier mark has a reputation, which is not diminished. 296 Third, the primary judge placed undue weight on the absence of evidence of actual confusion at and since the priority date. The primary judge described the absence as a "powerful factor" which told against the existence of any deception of confusion in any person (PJ at [743], [752]). 297 Whilst evidence of actual confusion can be a strong indicator of a likelihood of confusion, its absence is not an equivalently strong indicator that there is no likelihood of confusion arising. In Fine & Country Ltd v Okotoks Ltd [2012] EWHC 2230 (Ch); 7 WLUK 991, Hildyard J noted at [84] that courts recognise that the finding and producing of actual evidence of confusion is difficult. As observed by Diplock LJ in General Electric Co Ltd (USA) v General Electric Co Ltd "GE Trade Mark" [1972] 1 WLR 729, HL(E) at 737, the absence of confusion may be explicable, for example, by the small extent to which the mark has been used. That is the case here. 298 The absence of evidence of actual confusion is explicable in the present case by the small scale of Ms Taylor's business as at the priority date (and subsequently). At PJ [745], the primary judge noted there was no dispute that Ms Taylor's business was a small business. At PJ [790], the primary judge accepted that the fact that Ms Taylor's Mark was not widely used, by way of profile raising in relation to or on clothes, might explain the absence of any instances of actual confusion. 299 The consideration for s 60 is the notional normal and fair use of the mark across all relevant goods or services. The absence of actual confusion in this case, explicable by the limited use by Ms Taylor of her mark, tells little about the likelihood of any confusion arising from the notional fair use that might be made of Ms Taylor's Mark, and it does not merit the significant weight given to it by the primary judge. 300 Fourth, the primary judge placed some significance on how the Katy Perry Mark had actually been used by Ms Hudson subsequent to the priority date. At PJ [751], the primary judge took into account the actual use of the Katy Perry Mark on clothes sold by the appellants, and the fact that on those clothes the Katy Perry Mark is usually accompanied by graphics or photos of Ms Hudson. However, the relevant comparison for considering whether use of Ms Taylor's Mark is likely to deceive or cause confusion is between the reputation of the Katy Perry Mark, and a notional normal and fair use of Ms Taylor's Mark. Rather than just the reputation acquired by the Katy Perry Mark, the primary judge considered actual use of the mark, in combination with distinguishing graphics and photos, at a time after the priority date. At PJ [742], the primary judge found that as at the priority date, Ms Hudson had not launched her clothing brand. Post priority date use of the Katy Perry Mark on clothes that also bear images of Ms Hudson is not relevant to the s 60 enquiry. 301 Whilst each error on its own might be a matter on which minds may differ, the combined effect of the four errors leads us to conclude that the primary judge's assessment was affected by error. 302 Once the common practice is taken into account, together with the primary judge's finding that the Katy Perry Mark had a reputation in music and entertainment, and Ms Hudson's own reputation in the name "Katy Perry", and the correct comparison is made, we consider that because of the reputation in the Katy Perry Mark, the use by Ms Taylor of her mark on clothes would be likely to deceive or cause confusion. Appeal ground 3 is successful. 9.3.1 Discretion not to cancel for ground 3 303 Ms Taylor submits that even if s 60 is satisfied, the Court should refuse to cancel her mark based on ss 88(1)(a) or 89(1)(b) of the Trade Marks Act. The primary judge did not consider the question of whether to exercise the discretion, as it did not arise on the basis of her conclusions. 304 Section 88(1), which is expressed to be subject to ss 88(2) and 89, provides that the Court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by: (a) cancelling the registration of a trade mark; or (b) removing or amending an entry wrongly made or remaining in the Register; or (c) entering any condition or limitation affecting the registration of a trade mark that ought to be entered. 305 The Full Court in Anchorage FC observed at [146] that, unless s 89 is engaged, the discretion under s 88(1) is at large, constrained only by the general scope and objects of the Trade Marks Act. At [158], the Full Court observed that the correct approach to the exercise of the discretion under s 88(1), once enlivened (except in so far as that discretion is qualified by the operation of s 89), is to ask whether sufficient reason appears not to order the cancellation of the registered mark. Where the grounds for cancellation are satisfied, it is for the registered owner to persuade the Court that the discretion not to cancel should be exercised in its favour. 306 Section 89(1) provides that the Court may decide not to grant an application for rectification made: (a) under s 87; or (b) on the ground that a trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed (s 88(2)(a) in the present case, s 60); or (c) on the ground referred to in s 88(2)(c), if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the owner. 307 Once the threshold for enlivening the discretion under s 89 is passed, sub-s 89(2) provides that in making a decision under s 89(1), the court must take into account certain prescribed matters, as well as any other matter that the court considers relevant. 308 Regulation 8.2 provides a non-exhaustive list of matters relevant to the exercise of the discretion. These include the extent to which the public interest will be affected if the registration is not cancelled, whether any circumstances giving rise to the application for cancellation have ceased to exist, and whether there is any alternative remedy or order that would be adequate in the circumstances. 309 Whilst there is an overlap between the situations in which ss 88 and 89 could apply, that overlap is not complete. There will be circumstances, such as invalidity on a ground not involving deception or confusion where s 88, rather than s 89 will apply. 310 In this case, s 89 is engaged as we have found that Ms Taylor's Mark is liable to be cancelled on the ground that the trade mark is liable to deceive or cause confusion pursuant to s 60, a ground on which the application for the registration of Ms Taylor's Mark could have been opposed (s 88(2)(a)). 311 Ms Taylor submits that the exercise of discretion under s 89 is intended to codify the previous law as to "blameworthy" conduct, stating that a concern of this provision is to avoid a situation where "the activity of a competing trader which would otherwise be regarded as infringement can bring about a situation where the proprietor's use of its mark, because of confusion, leads to its invalidity": HTX International Pty Ltd v Semco Pty Ltd [1983] FCA 225; 49 ALR 636 at (per Fox J). In essence, the Court may exercise its discretion not to cancel a mark, if the registered owner of the mark is able to satisfy the Court that the ground relied upon, that the trade mark is liable to deceive or confuse, has not arisen through any act or fault of the registered owner. If the registered owner is able to satisfy the Court, then the Court may exercise its discretion not to grant an application for rectification. 312 However, the threshold for enlivening the discretion under s 89 is broader than just the "blameworthy" conduct of the trade mark owner. Section 89 refers to "act or fault", rather than just fault. The inclusion of "act" with the disjunctive "or" suggests that the enquiry is not restricted to blameworthy conduct, but whether the conduct of the trade mark owner has contributed to the mark becoming liable for removal on the basis of deception or confusion. 313 Ms Taylor submits that the s 89 discretion is enlivened. Ms Taylor relies on the following matters: (a) Ms Taylor's honest adoption of her mark in 2007, without any knowledge of Ms Hudson, in the course of commencing to trade under her own name; (b) Ms Taylor only became aware of Ms Hudson in July 2008, by which time Ms Taylor had already incurred significant personal expense in terms of time and money in her brand. At that time Ms Hudson's merchandising efforts were not directed to Australia specifically; (c) Ms Hudson achieved her reputation within a few months prior to the priority date. Ms Taylor submitted that this acquired reputation was a "bolt from the blue". (d) There has been no actual confusion, despite Ms Taylor trading continuously under her mark since the priority date, and nor is there likely to be any confusion. 314 The appellants submit that the s 89 discretion is not enlivened. According to Ms Taylor, the earliest time that she became aware of Ms Hudson was in July 2008 when she first heard the song "I Kissed a Girl" (PJ at [127]). It was after that awareness, in September 2008, that Ms Taylor made a conscious decision to file her application for a trade mark for a mark that was deceptively similar to Ms Hudson's stage name, Katy Perry. Ms Taylor accepted that, as at September 2008, she knew that Ms Hudson was a nationally and internationally famous pop star, and that musical artists such as Ms Hudson offered for sale clothing bearing their names at their concerts. 315 This case is an unfortunate one in the sense that two enterprising women in different countries each adopted their name as a trade mark at a time that each was unaware of the existence of the other. Both women put blood, sweat and tears into developing their businesses. One became an internationally famous entertainer in the music industry, the other, a small Australian fashion designer. As the fame of one grew internationally, the other became aware of her namesake and filed a trade mark application. 316 Although Ms Taylor adopted her mark innocently, by the time she applied for her mark she had knowledge of Ms Hudson, her reputation, and her mark. She also accepted that at the time she filed her application, she knew that it was likely that music artists sold clothing bearing their names at concerts and that celebrities often moved into merchandising. Ms Taylor applied for her mark with knowledge of the matters that ultimately led to Ms Hudson's success on the s 60 ground. 317 We consider that Ms Taylor's act of filing the trade mark application with knowledge of Ms Hudson, her reputation, and her mark in circumstances where she also knew that popular music stars, such as Ms Hudson, lend their names (and trade marks) to be used in connection with clothes and sell merchandise at their concerts, and accepted such conduct as a common practice, is sufficient not to enliven the discretion under s 89. 318 In the event that the discretion was to be enlivened, we would not have exercised that discretion in Ms Taylor's favour for the following reasons. 319 First, from time to time, Ms Taylor has sought to align herself with Ms Hudson in order to obtain some reflected benefit, conduct which would only increase the likelihood of consumers potentially being deceived or confused (PJ at [220]). 320 Second, although there is no evidence that any consumers have actually been confused despite the many years of overlapping use of the two marks in Australia, the Full Court observed in Anchorage FC in the context of the s 88 discretion, that whilst an absence of deception during the years of overlapping use is a consideration that may be relevant to the exercise of the discretion, it is not a determinative consideration, or even one that must be given significant weight: Anchorage FC at [166] (per Nicholas, Yates and Beach JJ). 321 Third, the public interest considerations in preserving the integrity of the Register and protecting consumers from being confused or deceived do not favour the exercise of the discretion not to remove Ms Taylor's Mark from the Register. There is a public interest in ensuring that trade mark registrations only be made in favour of applicants who are entitled to obtain them. As the High Court explained in Health World Ltd at [27] (per French CJ, Gummow, Heydon and Bell JJ), the Trade Marks Act offers various facilities for "… ensuring that the Register is pure in the sense that no mark is to be registered unless valid, and no registration of a mark is to continue if it is not valid …". The Full Court in Anchorage FC gave significant weight to the public interest considerations: see Anchorage FC at [163], [192] (per Nicholas, Yates and Beach JJ). 322 Fourth, in July 2009, Ms Hudson proposed a co-existence agreement with Ms Taylor that would have let both Ms Hudson and Ms Taylor continue to use their marks. Ms Taylor rejected that offer of a co-existence agreement, which as circumstances turned out, would have been an excellent outcome for both parties. The absence of any actual confusion over the many years of co-existence suggests that there has been no confusion on the part of consumers. However, having rejected the offer, Ms Taylor then chose to commence infringement proceedings against the appellants. In that sense, Ms Taylor has brought this result on herself. Unfortunately, it is no longer possible to return to the time of peaceful co-existence. 323 Having considered the matters raised by Ms Taylor discussed above, we are not satisfied that sufficient reason has been shown to not cancel the registration of Ms Taylor's Mark, even if we considered the relevant discretion to be enlivened, which we do not.

9.4 The submissions - circumstances applying at time of application for rectification pursuant to s 88(2)(c) (Appeal ground 4)

324 The appellants challenge the primary judge's rejection of their cancellation case based on s 88(1)(a) on the ground set out in s 88(2)(c) because of circumstances applying at the time when the application for rectification was filed, the use of Ms Taylor's Mark was likely to deceive or cause confusion. 325 The appellants contend that in coming to her conclusion at PJ [789], the primary judge again placed undue reliance on the absence of any actual confusion (after 10 years of use of both marks) and her conclusion that the strength of the reputation in the Katy Perry Mark was a compelling reason why a person would not be caused to wonder whether clothes bearing Ms Taylor's Mark were from the same source, to refuse to cancel Ms Taylor's Mark. 326 For the same reasons as they articulate in relation to ground 3, the appellants contend that the absence of actual confusion is both explicable in the circumstances, and of little assistance. The lack of evidence of actual confusion tells one nothing about the likelihood of such confusion arising from any notional use of the Ms Taylor's Mark, as at December 2019. 327 By the date of filing of the cross-claim, the primary judge found at PJ [785] that Ms Hudson had achieved international fame and that the Katy Perry Mark had a significant reputation, including in relation to her shoe collection and clothing. Given the strength of that reputation, the appellants contend that the primary judge ought to have concluded that the likelihood that consumers would be confused was enhanced, particularly in light of the purchaser's reasonable expectation that celebrities such as Ms Hudson often have their own fashion labels. 328 Ms Taylor accepts that the primary judge did err in relation to s 88(2)(c), but submits that the error would not change her Honour's conclusion. The primary judge erred by finding at PJ [782] that Ms Taylor accepted that the relevant consideration for the purposes of s 88(2)(c) was whether there would be a likelihood of deception and confusion based on notional use. However, Ms Taylor's submission at trial was that notional use was not the relevant comparison. Ms Taylor submits that the question in s 88(2)(c) is directed to present circumstances. Thus, the relevant test is an actual likelihood assessed as at 20 December 2019. Based on actual circumstances then applying, would Ms Taylor's use of her mark be likely to cause deception or confusion? 329 Ms Taylor submits that based on the two key factors identified by the primary judge - the absence of any actual confusion over the ten-year period of trading and the fame of the Katy Perry Mark - the primary judge's conclusion is reinforced by the actual, rather than nominal, use analysis. Further, on an actual use analysis, Ms Taylor contends that the absence of any evidence of confusion verges upon determinative. According to Ms Taylor, her limited use of her mark, is part of the factual matrix which shows that as at 20 December 2019, there was no likelihood of confusion. 330 Ms Taylor submits that if the Katy Perry Mark is as famous as Ms Hudson contends, as the primary judge found by this date, then consumers knowing Ms Hudson by reputation would be likely to remember Katy with a "y" not an "ie" - which Ms Taylor describes as a "striking difference", and an "unusual spelling of the name".

331 The primary judge approached the likelihood of deception and confusion for the purposes of s 88(2)(c) by reference to any "normal and fair use" of Ms Taylor's Mark. As the primary judge noted at PJ [787], that involved use of Ms Taylor's Mark on "hoodies, t-shirts, tank tops and booty shorts". Despite supporting that position at trial, Ms Taylor submitted on her notice of contention (ground 4) that the comparison should be assessed on the actual use of Ms Taylor's Mark. 332 The primary judge concluded at PJ [789] that having regard to the circumstances applying as at December 2019, the use of Ms Taylor's Mark on clothes was not likely to deceive or cause confusion. In addition to the absence of any evidence of actual confusion, the primary judge considered that the strength of Ms Hudson's reputation and the reputation in the Katy Perry Mark was a "compelling reason why a person would not be caused to wonder whether clothes bearing [Ms Taylor's] Mark were from the same source as those bearing the Katy Perry Mark" (PJ at [791]). 333 At PJ [792], the primary judge observed that her conclusion accorded with those of Davies J in Singtel Optus and Jessup J in Delfi Chocolate. In contrast to the present case, in both Singtel Optus and Delfi Chocolate, the marks in suit were found to be not substantially identical or deceptively similar. In both cases, the strong reputation in each mark acted to enhance the prospect that no consumers would be likely to be confused by the different marks. The prospect that consumers would be unlikely to be confused already arose from the marks not being deceptively similar. Contrast that with the case of deceptively similar marks. In that case, before the reputation is factored in, by reason of the deceptive similarity alone, the marks are likely to deceive or cause confusion: s 10 of the Trade Marks Act. 334 In Singtel Optus, Davies J found that the marks "OPTUS" and "OPTUM" were not deceptively similar: at [138] (per Davies J). It was the combination of the differences between the marks and the strong reputation attaching to the 'OPTUS' mark in relation to telecommunications that led Davies J to conclude that there would be no likelihood of confusion. 335 Likewise, in Delfi Chocolate, Jessup J found that the marks "MALTESERS" and "MALTITOS" were not deceptively similar. Jessup J observed at [27] that, for the purposes of s 60, the consumer is assumed to have that level of awareness of the mark as is consistent with the content and extent of the reputation of it. At [28] Jessup J found that the "MALTESERS" mark was "strongly embedded in the consciousness" of the notional consumer, it had a very widespread, solid reputation in the area of packaged confectionery. His Honour considered that a customer looking at a Maltitos package would be immediately struck by the differences between the two marks, and after a moment's reflection would readily conclude that those products were not Maltesers. That conclusion was based solely on the differences between the two marks. Jessup J observed that the strong reputation of the Maltesers mark would, if anything "make that conclusion a more likely one": Delfi Chocolate at [27] (per Jessup J). 336 Singtel Optus and Delfi Chocolate support the proposition that a strong reputation may militate against a likelihood of confusion where there are differences between the marks under comparison. However, in the present case the marks are deceptively similar, there is in fact little difference between the marks, and in that circumstance we consider that Ms Hudson's strong reputation in her name is more likely to enhance the likelihood of confusion, than reduce it. 337 We do not agree with the primary judge's conclusion that a probable purchaser when faced with an item of clothing bearing Ms Taylor's Mark (Katie Perry) would, on giving the matter a moment's reflection, conclude that the clothes in question did not come from the same source as clothes bearing the Katy Perry Mark. 338 As with our consideration of s 60, we do not consider that the absence of any actual evidence of confusion is persuasive, where that absence is explicable by the small scale of use of Ms Taylor's Mark over the 10 years since it was adopted. 339 For the same reasons as we came to a contrary conclusion to the primary judge in relation to s 60, we consider that as at the date that the cross-claim was commenced, consumers were likely to be deceived or confused, whether the comparison be the actual or notional use of Ms Taylor's Mark. By the date the cross-claim was commenced, the reputation of Katy Perry and the Katy Perry Mark is stronger than for the s 60 consideration, given the passage of time and the increase of Ms Hudson's international fame over that time. 9.5.1 Discretion not to cancel for ground 4 340 Again, s 89 is engaged by reason of Ms Hudson's success on the s 88(2)(c) ground. Accordingly, Ms Taylor must satisfy the threshold for s 89, in order to enliven the s 89 discretion not to grant an application for rectification of the Register. Ms Taylor relies on the same matters as before to enliven the discretion. 341 In addition to the factors set out at [313] above, Ms Taylor relies on the following additional factors in her appeal to the Court to exercise its discretion not to cancel her mark. In particular, Ms Taylor points to the assiduous infringing conduct of Ms Hudson and her companies, despite Ms Hudson's knowledge of both Ms Taylor's Mark, and Ms Taylor's refusal to enter a co-existence agreement. From the date of the first pleaded use of the Katy Perry Mark, that use was infringing. Ms Taylor submits that Ms Hudson's use was not honest concurrent use, and Ms Hudson should not be rewarded for "swamping" Ms Taylor's earlier mark, in circumstances where Ms Taylor is entirely without blame. 342 As we observed above, Ms Taylor applied for her mark with knowledge of Ms Hudson, her reputation, and her mark in circumstances where she also knew that that popular music stars, such as Ms Hudson, lend their names (and trade marks) to be used in connection with clothes and sell merchandise at their concerts, and accepted such conduct as a common practice. Whilst not "blameworthy", this conduct did contribute towards the s 88(2)(a) result, and for that reason we do not consider that the s 89 discretion is enlivened. 343 In the event that the s 89 discretion was enlivened, we do not consider that we could exercise the discretion not to remove Ms Taylor's Mark from the Register for the reasons we explained in section 9.3.1 above. 344 Further, in the circumstances of this case, we do not consider that Ms Hudson's conduct can be described as that of an "assiduous infringer". Ms Hudson honestly adopted her name as a mark in the United States in 2002. After learning of Ms Taylor and her mark, Ms Hudson proposed a co-existence agreement which was rejected. At all times Mr Jensen did not consider there was any likelihood of any consumers being deceived or confused. There was no deliberate "swamping" of Ms Taylor's Mark.

RELIEF (Appeal grounds 5, 6 and 7) 345 Before the primary judge, the appellants argued that, by reason of Ms Taylor's laches, acquiescence and delay, the Court should exercise its discretion not to grant injunctive relief and should limit Ms Taylor's entitlement to an account of profits (should she elect for that relief) (PJ at [802]). 346 The primary judge did not consider it to be appropriate to exercise her discretion in that way because the appellants had failed to establish when Ms Taylor first had knowledge of the infringing conduct (PJ at [823]). The primary judge reasoned that the failure to establish that fact meant that she was unable to ascertain the length of any delay and whether, as a result of that delay, the appellants were prejudiced. 347 By ground 5 of the appeal, the appellants contend that the primary judge erred in making that finding because, in their submission, the evidence did establish that Ms Taylor knew of the infringing conduct in 2009. In support of this ground, the appellants simply re-agitate the evidence before the primary judge with a view to securing a different outcome on appeal. 348 As to the question of damages, the primary judge was persuaded that the case before her warranted an award of additional damages under s 126(2) of the Trade Marks Act (PJ at [851]). In reaching that conclusion, her Honour had regard to a number of factors, including the fact that the appellants had failed to discharge their evidentiary onus, and could not establish that they believed that, at the time of the infringing conduct, they had an arguable defence to Ms Taylor's claim (PJ at [838]-[850]). 349 By ground 6 of the appeal, the appellants contend that the primary judge erred in concluding that Ms Taylor was entitled to an award of additional damages. In support of that ground, the appellants, once again, simply re-agitate the evidence before the primary judge with a view to securing a different outcome on appeal. 350 By ground 7 of the appeal, the appellants challenge the scope of the injunction which the primary judge granted against Kitty Purry. 351 As we have found that Ms Taylor's trade mark was not validly registered and that the Register should be rectified by cancelling its registration, the relief which the primary judge granted on 10 May 2023 in terms of Orders 1 to 5 cannot be sustained and should be set aside. Therefore, these grounds of appeal no longer arise and we do not propose to deal with them on a basis that is contrary to our finding that the registration of Ms Taylor's trade mark is invalid.

APPROPRIATE FORM OF ORDERS/DISPOSITION 352 For these reasons, the appeal succeeds in part. Orders 1 to 5 made by the primary judge on 10 May 2023 will be set aside. The costs order made by the primary judge on 4 August 2023 will also be set aside given that the appellants' cross-claim now succeeds and the respondent's claim for trade mark infringement cannot succeed. 353 An order will be made that the Register be rectified by cancelling the registration of trade mark no. 1264671. We will grant a limited stay of that order so as to ensure that no change is made to the Register before the respondent is given the opportunity to apply for special leave to appeal to the High Court, should she be advised to do so. 354 The respondent has had limited success on her cross-appeal, but not such as to lead to any substantive relief. In the circumstances, the appropriate order for costs is that the respondent pay the appellants' costs of the appeal and cross-appeal. As the primary judge's order for costs of the proceeding below will be set aside, it will be necessary for that question to be re-determined. It is appropriate that that question be remitted to the primary judge for that purpose. 355 Orders will be made accordingly. I certify that the preceding three hundred and fifty-five (355) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justices Yates, Burley and Rofe.

SCHEDULE OF PARTIES NSD 547 of 2023 Appellants Fourth Appellant: PURRFECT VENTURES LLC Cross-Respondents Second Cross-Respondent KATHERYN ELIZABETH HUDSON Third Cross-Respondent KITTY PURRY INC Fourth Cross-Respondent PURRFECT VENTURES LLC

Trade Marks Amendment Act 2006(Cth)

Trade Practices Act 1974(Cth)s 52

Patents Act 1990(Cth)s 120(4)

Trade Marks Act 1955(Cth)s 64(1)(a)

Trade Marks Act 1995(Cth)ss 10, 19, 19(3), 20, 20(1), 20(2), 20(3), 27(3)(b), 42, 44(3), 58, 60, 88(1), 88(1)(a), 88(2), 88(2)(a), 88(2)(c), 89, 89(1), 89(1)(b), 120, 120(2), 122, 122(1)(a), 122(1)(f), 122(1)(fa), 124, 126(2), 207(2), 209, 210(1)

Limitation Act 1969(NSW)ss 14(1), 23

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205 Anchorage Capital Master Offshore Ltd v Sparkes [2023] NSWCA 88; 11 NSWLR 304 Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6; 259 FCR 514 Anheuser-Busch v Budějovický Budvar, Národní Podnik [2002] FCA 390; 56 IPR 182 Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2016] FCAFC 22; 329 ALR 522 Australian Securities and Investments Commission v Hellicar [2012] HCA 17; 247 CLR 345 Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 Baume & Co Ltd v A H Moore Ltd [1958] Ch 907; 2 WLR 797, Ch D Baxter v Obacelo Pty Limited [2001] HCA 66; 205 CLR 635 Blatch v Archer (1774) 1 Cowp 63; 98 ER 969 Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255; 97 ACSR 127 Cantarella Bros Pty Ltd v Lavazza Australia Pty Lt (No 3) [2023] FCA 1258 Coulton v Holcombe [1986] HCA 33; 162 CLR 1 Décor Corporation v Dart Industries [1988] FCA 682; 13 IPR 385 Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd [2015] FCA 1065; 115 IPR 82 Dunlop Aircraft Tyres Ltd v Goodyear Tire & Rubber Company [2018] FCA 1014; 262 FCR 76 Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44; 407 ALR 473 Fine & Country Ltd v Okotoks Ltd [2012] EWHC 2230 (Ch); 7 WLUK 991 Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239 GAIN Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA 519; 123 IPR 234 General Electric Co Ltd (USA) v General Electric Co Ltd "GE Trade Mark" [1972] 1 WLR 729, HL(E) Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4) [2016] FCA 138; 116 IPR 269 Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; 385 ALR 514 Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590 Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94; 214 FCR 396 Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110; Bus LR 1465 HTX International Pty Ltd v Semco Pty Ltd [1983] FCA 225; 49 ALR 636 Cases cited: Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; 30 FCR 326 JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 329 ALR 625 Keller v LED Technologies Pty Ltd [2010] FCAFC 55; 185 FCR 449 Marino v Bello (No 3) [2022] NSWCA 181; 408 ALR 650 Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; 81 IPR 354 McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102 McD Asia Pacific LLC v Hungry Jack's Pty Ltd [2023] FCA 1412; 175 IPR 397 Mercury Communications Limited v Mercury Interactive (UK) Limited [1995] FSR 850 Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816; AIPC ¶91-104 Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; 275 ALR 526 Parker-Knoll Ltd v Knoll International Ltd (No 2) [1962] RPC 265 PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128; 285 FCR 598 Qantas Airways Limited v Edwards [2016] FCA 729; 338 ALR 134 Re Australian Wine Importers Ltd (1889) 41 Ch D 278 Re Parkington & Co (1946) 63 RPC 171 Reckitt & Coleman (Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84 Reliance Water Controls Ltd v Altecnic Ltd [2001] EWCA Civ 1928; 12 WLUK 261 Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923; 370 ALR 140 SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1027; 45 IPR 169 Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; 277 CLR 186 Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719; 141 IPR 463 Singtel Optus Pty Ltd v Optum Inc [2018] FCA 575; 140 IPR 1 Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corporation (1987) 8 IPR 285 Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1953) 91 CLR 592 Sterling Pharmaceuticals Pty Ltd v Johnson & Johnson Australia Pty Ltd [1990] FCA 278; 96 ALR 277 Taylor v Killer Queen, LLC (No 5) [2023] FCA 364; 172 IPR 1 The Koursk [1924] LRP 140; 18 Lloyd's Rep 153 Thompson v Australian Capital Television Pty Ltd [1996] HCA 38; 186 CLR 574 Trident Seafoods Corporation v Trident Foods Pty Ltd [2018] FCA 1490; 137 IPR 65 Woolworths Limited v BP plc (No 2) [2006] FCAFC 132; 154 FCR 97

Killer Queen, LLC v Taylor

At a glance

Court

Decision date

Before

Source

Judgment (42 paragraphs)

Parties

Legislation Cited (10)

Cases Cited (55)