Taylor v Killer Queen LLC

• Jurisdiction: Australia Federal only
• Judge: MARKOVIC J
• Judgment Date: 07 April 2020
• Neutral Citation: [2020] FCA 444
• Date: 07 April 2020
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Taylor v Killer Queen LLC [2020] FCA 444

File number:	NSD 1774 of 2019
Judge:	MARKOVIC J
Date of judgment:	7 April 2020
Catchwords:	PRACTICE AND PROCEDURE – application for an order pursuant to r 30.01 of the Federal Court Rules 2011 (Cth) that all issues of liability be heard separately from and prior to all other issues in the proceeding – whether just and convenient to make the order – whether the order will contribute to a saving in time and costs – whether there will be any overlap between the evidence adduced in relation to liability and quantum and the effect of such an overlap – whether the order will increase prospects of settlement – application allowed
Legislation:	Federal Court of Australia Act 1976 (Cth) s 37M Trade Marks Act 1995 (Cth) ss 44, 88, 62A, 120, 122, 124, 126 Federal Court Rules 2011 (Cth) r 30.01 Federal Court Rules 1979 (Cth) O 29 r 2 (repealed)
Cases cited:	ABB v Freight Rail[1999] NSWSC 1037 Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3) [2017] FCA 60 DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194 Fleming’s Nurseries Pty Ltd v Hannaford[2008] FCA 591 Hard Coffee Pty Ltd v Hard Coffee Mainbeach Pty Ltd [2009] ATMO 26; [2009] AIPC 92-343 Reading Australia Pty Ltd v Australian Mutual Provident Society (1999) 240 FCR 276
Date of hearing:	20 March 2020
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	54
Counsel for the Applicant:	Mr R Cobden SC and Mr R Clark
Solicitor for the Applicant:	Silberstein & Associates
Counsel for the Respondent:	Ms E Bathurst
Solicitor for the Respondent:	Corrs Chambers Westgarth

ORDERS

		NSD 1774 of 2019
BETWEEN:	MS KATIE JANE TAYLOR Applicant
AND:	KILLER QUEEN, LLC First Respondent ; MS KATHERYN ELIZABETH HUDSON Second Respondent

JUDGE:	MARKOVIC J
DATE OF ORDER:	7 APRIL 2020

THE COURT ORDERS THAT:

1. Pursuant to r 30.01 of the Federal Court Rules 2011 (Cth), all issues of liability, entitlement to additional damages for alleged trade mark infringement and all claims for declaratory and injunctive relief, be heard and determined separately from, and prior to, all other issues and claims in the proceeding.

2. The applicant pay the respondents’ costs of the interlocutory application filed on 3 March 2020.

3. The proceeding be listed for case management hearing on 23 April 2020 at 9.30 am with such case management hearing to take place by telephone or other electronic means, unless the parties provide the Associate to Markovic J with draft consent orders prior to that time.

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

REASONS FOR JUDGMENT

MARKOVIC J:

1. This is an application made by the respondents, Killer Queen, LLC (Killer Queen) and Katheryn Elizabeth Hudson, pursuant to r 30.01 of the Federal Court Rules 2011 (Cth) (Rules) for an order that all issues of liability, entitlement to additional damages for alleged trade mark infringement and all claims for declaratory and injunctive relief sought in this proceeding by the applicant, Katie Jane Taylor, be heard and determined separately from, and prior to, all other issues and claims in the proceeding.

2. Ms Taylor designs and sells clothes under the brand name “KATIE PERRY”.

3. Ms Hudson is a professional musical artist who in 2004 adopted the name Katy Perry, a combination of the short form of her own first name and her mother’s maiden name, for the purposes of her professional musical career and associated commercial merchandise licensing activities. Killer Queen is a company established in California, United States of America. Ms Hudson is a manager and/or member of Killer Queen.

The proceedingThe amended statement of claim and defence

4. In her amended statement of claim Ms Taylor alleges that:

1. since about November 2006 she has designed, marketed, offered for sale and sold clothes under the brand “KATIE PERRY”;

2. she is the registered owner of Australian trade mark no 1264761 for the word “KATIE PERRY” (Applicant’s Mark) which is registered in class 25 for clothes and has a priority date of 29 September 2008;

3. Killer Queen or Ms Hudson individually or jointly have done one or more of the following acts: imported for sale, distributed, advertised, promoted, marketed, offered for sale, supplied, sold and/or manufactured in Australia or to people in Australia, clothes or goods of the same description, bearing or in association with the word mark KATY PERRY and other marks which are set out at para 7 of the amended statement of claim, and which in each case are differently styled versions of the word mark (together, the Alleged Infringing Marks). Ms Taylor particularises six ways in which the respondents are said to have engaged in those acts;

4. further, or in the alternative, Killer Queen or Ms Hudson individually or jointly were party to, or further or alternatively aided, counselled, directed or joined in, the acts referred to in the preceding subparagraph and thereby participated in a common design, and/or participated in a common design with operators of pop-up stores and/or specified websites and department stores, to carry out the acts referred to in the preceding subparagraph;

5. each of the Alleged Infringing Marks is substantially identical with, or deceptively similar to, the Applicant’s Mark and the alleged conduct set out in subparas (3) and/or (4) above constituted use of the Alleged Infringing Marks as trade marks in respect of clothes and further, or in the alternative, in respect of goods of the same description; and

6. the conduct engaged in by Killer Queen and Ms Hudson infringed the Applicant’s Mark pursuant to s 120(1) and (2) of the Trade Marks Act 1995 (Cth) (TM Act).

5. By reason of those alleged breaches Ms Taylor seeks either an account of profits or damages; and, in addition, Ms Taylor alleges that the conduct of Killer Queen and/or Ms Hudson has been such as to attract additional damages pursuant to s 126(2) of the TM Act.

6. In their defence, the respondents:

1. say that they provided licences of the KATY PERRY name, brand and trade mark on commercial terms to various persons and that, pursuant to those licences, merchandise, including clothes, bearing the name, brand and trade mark KATY PERRY, in various colours and forms of stylisation, have been offered for sale, supplied and sold by persons, including retailers, to persons resident in Australia, including by way of online sales;

2. admit that the trade mark KATY PERRY and each of the other stylised trade mark representations (which are together the Alleged Infringing Marks) is deceptively similar to the Applicant’s Mark;

3. admit, in relation to the merchandise set out in subpara (1) above, that the name Katy Perry is used as a trade mark in relation to that merchandise by or under the control of the respondents, or one of them;

4. deny that they have infringed the Applicant’s Mark pursuant to s 120(1) and (2) of the TM Act because:

1. by...