In exciting news for brand owners and trade mark enthusiasts, brands are currently the focus of the following disputes before the High Court of Australia:
- Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd (M32/2025) and
- Taylor v Killer Queen LLC & Ors (S49/2025).
Unfortunately, the most recent special leave application was refused on 12 June in Cantarella Bros Pty Ltd v Lavazza Australia (S29/2025).
This update summarises these disputes and the issues before the High Court.
Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd (M32/2025)
On 3 April 2025, the High Court granted special leave to appeal part of the judgment delivered by the Full Federal Court in Global Retail Brands Australia Pty Ltd v Bed Bath ‘N’ Table Pty Ltd [2024] FCAFC 139.[1]
By way of background, it is a threshold requirement for reputational-based claims of the kind prohibited by the misleading or deceptive conduct provisions in the Australian Consumer Law (ACL)[2] or the tort of passing off that the applicant holds a reputation in a particular sign among a relevant class of persons of a kind which means that those persons would associate that sign with the applicant.
In the Full Court decision, use of the HOUSE B&B Mark (depicted left, below) by Global Retail Brands Australia Pty Ltd in respect of soft homewares did not amount to misleading or deceptive conduct under the ACL or otherwise enliven the tort of passing off.
Critically, the Full Court considered that the owner of the BBNT Mark (depicted below, right) had not challenged the primary judge’s finding that no independent reputation subsisted in ‘BED BATH’ or ‘BED & BATH’ alone.
In circumstances where the primary judge at first instance[3] had already concluded that the HOUSE B&B Mark was not deceptively similar to the composite BBNT Mark, the Full Court considered that it was wrong for the primary judge to conclude that use of the HOUSE B&B Mark was misleading or deceptive and contravened the tort of passing off.
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House B&B Mark |
BBNT Mark |
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The High Court will hear this matter sometime after July 2025.[4] When it does, it is likely that the following issues of interest will be considered:
- the extent to which use of a composite mark (eg BED BATH N TABLE) can establish reputation in a constituent element (eg ‘BED BATH’ or ‘BED & BATH’) in order to found an action for reputational based claims of passing off and misleading or deceptive conduct under the ACL where the alleged wrongdoer has used that constituent element as part of another composite (eg HOUSE BED & BATH) and
- the extent to which it is relevant to consider the alleged wrongdoer’s subjective state of mind when designing a brand in order to support a finding that adoption of the brand would be likely to mislead or deceive ordinary and reasonable consumers, particularly where that state of mind is said to be ‘wilfully blind to the risk of confusion.’
Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (S29/2025)
On 14 March 2025, Cantarella applied for special leave to appeal from part of the judgment of the Full Federal Court in Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12.[5] On 12 June, the High Court refused the application.
By way of background, respondents to trade mark infringement proceedings in Australia frequently seek to invoke sections 88(1)(a) and 88(2)(a) of the Trade Marks Act 1995 (Cth) (the TM Act) as a means of avoiding liability for trade mark infringement. Pursuant to these provisions, a Court has a discretionary power to cancel a trade mark registration on any of the grounds on which the registration of the trade mark could have been opposed under the TM Act. In this context, section 58 of the TM Act is a ground of opposition that respondents frequently cite as it allows a trade mark to be opposed (and therefore cancelled) if the trade mark applicant is not the owner of the trade mark.[6]
In the Full Court decision, Cantarella’s claims for trade mark infringement failed when Lavazza successfully cancelled the Australian trade mark registrations for certain ORO trade marks that formed the basis of the allegations. Lavazza achieved this by arguing that Cantarella was not the true owner of the ORO trade mark, given Lavazza established that a third party had used the ORO trade mark in Australia in respect of identical coffee goods prior to the time that Cantarella used its ORO trade mark in relation to coffee on 20 August 1996 and filed its various applications to register its ORO trade mark in 24 March 2000 and 30 September 2013.
As part of this judgment, Cantarella sought leave to argue a new argument that was not raised at trial, namely, that the concept of ownership under section 58 of the TM Act encompassed common law rights of concurrent ownership. More specifically, Cantarella asked the Full Court to conclude that Cantarella was a co-owner of the ORO trade mark at the time of filing the applications to register the ORO trade mark on the basis of its use that post-dated the third party’s use of the ORO trade mark in respect of coffee goods and that Cantarella argued was honest and concurrent with that third party’s use of ORO in respect of coffee goods.
On the question of law, the Full Court left open the possibility that section 58 (ownership) should be read subject to section 44(3) of the TM Act. That is, the Full Court said the ‘preferable solution’ might be to prevent an application to register a trade mark from being rejected under section 58 on the basis that the trade mark applicant was not the owner of the trade mark if the applicant can demonstrate under section 44(3) of the TM Act that the applicant had honestly and concurrently used the trade mark.
However, Cantarella required leave of the Full Court to advance this argument fully on appeal. In turn, the Full Court would not grant leave to Cantarella ‘if evidence could have been given which by any possibility could have prevented the point raised from succeeding’.
Here, due to the question of fact, the Full Court refused to grant leave to Cantarella to advance this ground because there was not enough evidence to demonstrate that Cantarella’s use was honest under section 44(3) of the TM Act. For example, Cantarella led no evidence at all to explain why it adopted the ORO trade mark. Further, it would have been open to Lavazza to explore the issue in discovery and in evidence with a view to showing that Cantarella adopted the ORO trade mark for use in relation to coffee with knowledge of the third party’s prior use of the trade mark in Australia and overseas.
As part of Cantarella’s application for special leave, Cantarella essentially asked the High Court to consider the following questions:
- whether the concept of ‘owner’ within the meaning of section 58 of the TM Act included a person who had honestly and concurrently used the trade mark but had not been the first person to use the trade mark in Australia and
- the extent to which honest concurrent use will be a determinative, or highly relevant factor, in favour of exercising the discretion in section 88(1) of the TM Act not to cancel a registration.
In denying special leave, the High Court considered that the proposed appeal had insufficient prospects of success to support a grant of special leave and that the High Court was not the appropriate vehicle to determine any principle or question of law of public importance.
Taylor v Killer Queen LLC & Ors (S49/2025)
On 11 April 2025, the High Court granted Katie Jane Taylor special leave to appeal from part of the judgment of the Full Federal Court in Killer Queen, LLC v Taylor [2024] FCAFC 149.[7]
By way of background, in the context of a cancellation action under sections 88(1)(a) and 88(2)(a) of the TM Act, section 60 is a common ground relied upon in circumstances in which, because of a reputation in another trade mark, use of the registered trade mark would be likely to deceive or cause confusion.[8] Section 88(1)(a) and 88(2)(c) of the TM Act also allows a registration to be cancelled in circumstances where, at the time of filing the application for rectification, use of the registered trade mark would be likely to deceive or cause confusion. Under section 89 of the TM Act, the Court, in its discretion, can decide not to cancel a trade mark registration under section 88 if the Court is satisfied that the cancellation ground relied upon did not arise through any act or fault of the registered owner.
In the Full Federal Court decision,[9] Katie Jane Taylor’s infringement claim in respect of performer Katy Perry’s use of the KATY PERRY mark on clothing failed when Ms Taylor’s registration was cancelled under sections 88(2)(a) and 88(2)(c). Ms Taylor’s registration was cancelled on the basis that it could have been successfully opposed under section 60 of the TM Act, and separately at the time in which the rectification was filed, use of Ms Taylor’s trade mark was likely to deceive or cause confusion.
In coming to this decision, the Full Court disagreed with the primary Judge’s view that for the purpose of section 60, Katy Perry’s reputation in the KATY PERRY mark was limited to music and entertainment (rather than clothing). Instead, the Full Court held 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.’[10]
The Full Court also held that (for the purpose of section 88(2)(c)) the primary Judge had placed undue weight on the lack of actual confusion, in finding that Ms Taylor’s registration was unlikely to confuse or deceive. While acknowledging that there has been no evidence of actual confusion, the Full Court held that the relevant consideration is the notional normal and fair use of the mark across the relevant goods (rather than actual use).
In declining to apply the discretion under section 89 of the TM Act, the Full Court found that Ms Taylor’s act of filing the trade mark application with the knowledge of the performer Katy Perry (and her reputation generally) was sufficient not to engage the discretion under section 89.
The High Court will hear this matter sometime after July 2025.[11] When it does, the issues on appeal will include the following:
- whether the Full Court made an error in finding that Katy Perry (the performer and her related entities) had established grounds in sections 88(2)(a) and 88(2)(c) of the TM Act to cancel Ms Taylor’s registration. In turn, this is likely to include the following issues:
- under section 60, whether a reputation was established in the name and/or trade mark KATY PERRY
- under section 60, whether the Full Court erred in using hindsight to find that Katy Perry (performer) had the requisite reputation as at the priority date of Ms Taylor’s registration
- the extent to which deceptive similarity is relevant to section 60
- whether section 88(2)(c) should take into consideration notional use across the full range of registered goods and services, or whether the actual use made as at the date of the application for rectification of the trade mark is the relevant consideration
- whether the Full Court made an error in refusing to exercise the discretion in section 89 of the TM Act. In turn, this is likely to include consideration of whether, for the purpose of section 89, the mere act of filing a trade mark (with subjective knowledge) comprises an ‘act or fault’ of the registered owner in causing deception or confusion (as relevant to sections 60 and/or 88(2)(c)).
Feature image: ‘Texture Abstract‘, 15 December 2016, Pixabay.
[1] Global Retail Brands Australia Pty Ltd v Bed Bath ‘N’ Table Pty Ltd [2024] FCAFC 139.
[2] Competition and Consumer Act 2010 (Cth), Schedule 2 at s 18(1).
[3] Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2023] FCA 1587.
[5] Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 1.
[6] In this context, it is important to remember that the owner of a trade mark in Australia in relation to specific goods will be the party that first uses that trade mark (or a sufficiently similar trade mark) in a relevant sense in relation to those goods (or sufficiently similar goods), or in the absence of any relevant use, the party that first applies to register that trade mark (or a sufficiently similar trade mark) in relation to those goods (or sufficiently similar goods).
[8] For the purposes of section 60, the reputation of the other trade mark is to be established as at the priority date of the registered trade mark, the subject of the cancellation action.
[9] Killer Queen, LLC v Taylor [2024] FCAFC 149.
[10] As above at [290].
