Parties who seek to object to a trade mark must now have clearly established a reputation in the specific goods or services of any proposed-mark. This is a result of the High Court’s recent decision in Taylor v Killer Queen LLC [2026] HCA 5 and IP Australia’s subsequent March 2026 updates to the Trade Marks Manual. This article offers a summary of the changes, and a checklist of considerations for contentious trade mark disputes in the new post decision landscape.

Case summary

The circumstances of this widely publicised case concern Australian fashion designer Katie Jane Taylor, Appellant in the High Court (Appellant) and owner of the registered word mark ‘KATIE PERRY’ for clothing, who faced a rectification bid from Katheryn Elizabeth Hudson (the pop star known as Katy Perry) among other respondents (Respondents) in the High Court, following the Respondents’ promotion and sale of ‘KATY PERRY’ branded merchandise in Australia.

The Respondents sought cancellation of Ms Taylor’s registration under sections 88(2)(a) (read with section 60) and 88(2)(c) of the Trade Marks Act 1995 (Cth). They argued that Ms Taylor’s trade mark should be cancelled on the basis that, at its priority date, Ms Hudson already had a sufficiently strong reputation in a similar name or mark, such that consumers were likely to be confused or deceived.

Following a string of appeals, the case reached the High Court where the majority allowed Ms Taylor’s appeal and overturned the Full Court’s orders cancelling her ‘KATIE PERRY’ registration for clothes. The Court accepted the primary judge’s view that any likelihood of deception or confusion must arise because of the earlier mark’s reputation, assessed against the notional normal and fair use of the later mark (see [196], [272] and [273]). Crucially, the Court held that reputation must be proved in respect of particular goods and/or services, not a mere general reputation (see [197], [198], [215] and [216]).

This means that any reputation must:

1. be in respect of particular goods and/or services; and
2. must cause the normal and fair use of the opposed mark to be likely to deceive or cause confusion in relation to the specific goods or services the subject of the trade mark dispute (see [197], [198], [215] and [216]).

As such, the majority of the Court held that while Ms Hudson had acquired a reputation in Australia at the priority date of Ms Taylor’s mark (being 29 September 2008), that reputation had not been sufficiently evidenced in respect of the goods/services of the competing mark (being clothing in class 25) (see [197], [198] and [270]), and neither a broad, unspecific reputation (see [178], [189], [215], [216] and [262]), nor reliance on a common industry practice alone (see [195], [270] and [271]), was sufficient to supply the required goods or services-specific reputation. Therefore, the section 60 ground for cancellation was not made out on the majority’s view, and Ms Taylor retained her mark (see [300]).

Changes to the Trade Marks Manual

As a result of Taylor v Killer Queen LLC [2026] HCA 5, the Trade Marks Manual has been updated to reflect the new legislative interpretation. It now states (inclusions in bold):

‘Section 60 has two elements both of which must be established by the opponent. Firstly, the opponent has to show that another person’s trade mark, registered or unregistered, had acquired a reputation in Australia in respect of particular goods and/or services before the priority date of the applicant’s trade mark. Secondly, the opponent has to show that, in light of that reputation, use of the applicant’s trade mark would be likely to deceive or cause confusion.’

Trade Marks Manual of Practice and Procedure, Part 46.4.5

with specific reference made to the case, stating:

‘The reputation must be reputation as a trade mark (Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81) and must be in respect of particular goods and/or services (Taylor v Killer Queen LLC [2026] HCA 5).‘

In short, the Trade Marks Manual now makes explicit that section 60 turns on a goods/services specific trade mark reputation at the priority date, not a general reputation, and that the second limb (likelihood of deception or confusion) must arise in light of that proved reputation.

Impact for clients – reputation must be built in each relevant goods or services category

‘[a] trade mark cannot acquire a reputation in Australia disconnected from the goods or services the source of which the trade mark distinguishes from the source of other goods or services.’

Taylor v Killer Queen LLC [2026] HCA 5, [262]

Clients seeking trade mark protection across multiple categories of goods or services must ensure that their reputation‑building efforts are not confined to a single category. The High Court made clear that confusion under section 60 cannot merely arise as a result of a reputation in respect of other goods or services (see paragraphs [197] – [198] and [216]), or any other general reputation outside of goods or services (see paragraph [178] and [215]).

In rejecting the Full Court’s approach, the majority held that the respondents’ reference to the common industry practice of pop stars selling merchandise could not, of itself, establish a reputation in the category of clothing, because such a reputation in relation to those goods or services could not be established unless the relevant party has clearly undertaken that common practice to specifically imbue that reputation in those goods and services (see paragraph [182] and [270]-[271]). In this case, the majority found that Ms Hudson had neither:

1. established that the common practice of pop stars selling clothing meant that Ms Hudson’s mark in music and entertainment (classes 9 and 41) automatically extended the reputation of the mark to clothing; nor
2. provided evidence that Ms Hudson’s mark had actually been used in Australia in accordance with any such common practice.

(See also [182], [255] and [271].)

Accordingly, a common industry practice does not, of itself, expand the scope of a trade mark’s reputation beyond the goods or services for which it has actually been used. Such practice must specifically imbue a reputation in the relevant goods or services, and, there must be clear evidence that this common practice has been undertaken by any applicant or opponent.

Accordingly, clients who have established a strong reputation in one category, for example, entertainment, technology, or food and beverage, should not assume that reputation in these categories will be sufficient to oppose a competing mark registered in a different category.

Where protection in multiple categories of goods or services is sought, clients should actively build and document use of the trade mark in each individual category, and should register their marks in all relevant classes from the outset.

Impact for practitioners

For practitioners, Taylor v Killer Queen LLC tightens how section 60 objections should be pleaded and proved. The decision significantly reduces the usefulness of cross category arguments, and forces closer attention to the link between the opponent’s established reputation and the confusion said to arise from use of the applied-for mark.

Pleading and proof: define the reputation with precision

First, the opponent’s reputation must be framed with precision as a trade mark and in respect of particular goods and/or services. Evidence that demonstrates broad public recognition or general celebrity will likely be insufficient unless it is tied to trade mark use for the relevant goods or services at the priority date. In practice, this shifts the focus to class specific use, promotion and market recognition, and encourages more disciplined evidence-gathering (such as sales channels, advertising spend, third party references and consumer exposure¹) for the precise category in issue.

Causation: confusion must arise because of reputation

Secondly, the causation inquiry under the second limb is now more exacting. Practitioners should note that it is insufficient merely to establish that marks are deceptively similar, rather, the deception or confusion must arise because of the earlier mark’s proved reputation (see paragraphs [191], [262] and [263]). A narrower, category confined reputation will provide a much weaker platform for that causal link where the competing mark is in another category of goods or services.

Practically, this means that section 60 grounds should be pleaded with a clear theory of consumer reasoning focusing on reputation and resultant deception or confusion. The grounds must turn to the relevant consumer’s knowledge of the reputation of the opponent’s mark (for the relevant goods/services), and why that knowledge would cause them to draw an incorrect trade connection when encountering the applicant’s use in the marketplace.

Practical checklist for section 60 disputes post-Taylor

1. Define the reputation by reference to the specific goods/services in dispute as at the priority date;
2. Avoid relying on a general reputation or a reputation in respect of other goods and services; and
3. Articulate the causal pathway that establishes why the reputation (and not mark similarity alone) would cause deception or confusion.

This article was written by Ashley Holland, Partner, Helen Kavadias, Partner, and Saxon Quick, Solicitor.

¹ Being established methods to determine recognition, per McCormick & Co Inc v McCormick (2000) 51 IPR 102; [2000] FCA 1335 at [85].