FEDERAL COURT OF AUSTRALIA

National Cancer Foundation v Registrar of Trade Marks [2025] FCA 711

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be allowed.

2.    The respondent pay the appellant’s costs of and incidental to the appeal to be agreed or assessed.

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

REASONS FOR JUDGMENT

MCEVOY J:

1    The present proceeding is an appeal in the court’s original jurisdiction from a decision of a delegate of the respondent, the Registrar of Trade Marks, pursuant to s 84D of the Trade Marks Act 1995 (Cth) (the Act). The appeal concerns the revocation of the registration of trade mark number 2086028 for the words “BROWN NOSE DAY” (the Trade Mark), which was registered on 15 December 2020 in respect of “charitable fundraising” services in class 36.

2    On 28 February 2023, a delegate of the Registrar decided to revoke the registration of the Trade Mark pursuant to s 84A of the Act on the basis that he was satisfied that:

(a)    the Trade Mark should not have been registered, having regard to the circumstances that existed when it became registered; and

(b)    it was reasonable to revoke the registration of the Trade Mark, taking account of all the circumstances.

3    The appellant, the National Cancer Foundation (NCF), appeals from the decision on the basis that the statutory requirements in s 84A of the Act for revocation of registration have not been met. The Registrar contests the appeal on the basis that the delegate’s decision to revoke the registration of the Trade Mark was correct.

4    The NCF relies on written closing submissions dated 28 May 2025 (which superseded earlier written opening submissions), and the following affidavits:

(a)    the affidavit of Mr John Thompson, chief executive officer of the NCF, dated 28 June 2023;

(b)    the affidavit of its solicitor, Mr Gregory Tye, dated 28 June 2023; and

(c)    the affidavit of Professor Valentyna Melnyk, a professor of marketing and deputy head of research at the University of New South Wales, dated 28 June 2023.

5    The Registrar relies on written closing submissions dated 28 May 2025 (which superseded earlier written opening submissions). The Registrar did not lead any evidence.

6    For the reasons that follow I have determined that the appeal should be allowed. I accept that circumstances did not exist when the Trade Mark became registered that could properly have satisfied the Registrar that the Trade Mark should not have been registered, and that there was no error or oversight in the examination process. Further, on a proper analysis, I consider that the Trade Mark is not deceptively similar to any prior marks of Red Nose Limited (RNL), RNL having asserted prior trade mark registrations for, amongst other marks, RED NOSE DAY and a series mark including the words NOSE DAY and various colour variations. Importantly in this regard I accept that the word “BROWN” clearly distinguishes the Trade Mark, particularly when it is coupled with the word “NOSE” and when regard is had to the colloquial meaning of BROWN NOSE.

7    Nor was it reasonable to revoke the Trade Mark. I accept that revocation is not reasonable where there has been some level of investment in the Trade Mark and where there are legitimate differing views within IP Australia itself as to whether the Trade Mark is deceptively similar to any of RNL’s prior marks. As the NCF has submitted, revocation of the statutory property in a trade mark is an extreme measure and should be exercised with caution and only where clear error or oversight is demonstrated. I do not consider that it was justified in this case.

BACKGROUND

8    The NCF was established in June 2013. Is a charity that seeks to raise funds to support cancer prevention and treatment.

9    In April 2020, the NCF decided to pursue the “Brown Nose” theme for bowel cancer fundraising and awareness. The expression “Brown Nose” is plainly confronting, and the evidence is that the NCF adopted the theme as an opportunity to use a mixture of humour, shock, affront, and concern to raise awareness of bowel cancer.

10    On 7 May 2020, the NCF filed an application to register the Trade Mark. The application was examined as required by s 31 of the Act. In the course of the examination process, prior registered marks owned by RNL were identified as potentially conflicting marks for the purposes of s 44 of the Act (the RND marks). Relevantly, those marks included:

(a)    trade mark number 490285 for ;

(b)    trade mark number 1022837 for the words “RED NOSE DAY” in respect of “charitable fundraising services” in class 36 (the RED NOSE DAY mark);

(c)    trade mark number 909947 for ; and

(d)    trade mark number 530371 for a series of trade marks comprising the words “NOSE DAY” and six other marks involving the name of a colour plus “NOSE DAY” (“RED NOSE DAY”, “WHITE NOSE DAY”, “BLACK NOSE DAY”, “BLUE NOSE DAY”, “YELLOW NOSE DAY” and “GREEN NOSE DAY”, but notably not “BROWN NOSE DAY”) in respect of “fundraising” services in class 36 (the NOSE DAY series).

11    The examiner found that each of the RND marks were “sufficiently different” to the Trade Mark and no ground for rejecting the Trade Mark was cited. As such, the Trade Mark was accepted for registration and advertised for acceptance in the Official Journal. No notice of opposition was filed and, as has been mentioned, the mark was entered on the Register of Trade Marks on 15 December 2020.

12    On 25 October 2021, the solicitors for RNL wrote to the Registrar requesting the revocation of the Trade Mark under s 84A of the Act on the basis that the examiner had erred in failing to raise a s 44 objection during the examination process.

13    On 16 November 2021, the Deputy Registrar of Trade Marks issued a written Notice of Intention to Revoke Registration to the NCF (the Notice), advising that the Registrar proposed to revoke the registration of the Trade Mark on the basis that a s 44 ground for rejection should have been raised against the mark at the examination stage as the Trade Mark was substantially identical or deceptively similar to the RND marks.

14    Following receipt of the Notice the NCF requested the Deputy Registrar provide the basis for the decision to issue the Notice, and provide all documents relied upon in the making of that decision.

15    The correspondence produced would seem to suggest that there had been certain delays by IP Australia in responding to the NCF’s requests. It also appears to reveal that there were no documents which record IP Australia’s reasoning process for issuing the Notice, other than the Notice itself.

16    On 13 October 2022, the NCF requested a hearing in accordance with s 84A(5) of the Act and filed submissions and evidence in opposition to revocation. The hearing was conducted on
5 December 2022 and resulted in the revocation decision under s 84A of the Act which is the subject of this appeal.

THE ISSUES ON THE APPEAL

17    It is well established that the court is to decide the matter as upon an original application and not merely to decide whether the decision of the Registrar can or cannot be supported: Jafferjee v Scarlett (1937) 57 CLR 115 at 119 (Latham CJ, McTiernan J agreeing), [126] (Dixon J) (Jafferjee); Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [32] (French J) (Woolworths); Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511 at [22]-[23] (Yates J) (Apple). The matter is to be determined afresh on the merits, applying the same legal criteria that the Registrar was required to adopt: Apple at [22]-[23]; Woolworths at [33].

18    As the Registrar accepts, there is no presumption in favour of the correctness of the decision, save that weight will be given to the Registrar’s opinion as that of a skilled and experienced person: Jafferjee at [126]; Woolworths at [32]; Apple at [23]. The court is not bound to accept the Registrar’s factual judgment, but it can be treated as a factor relevant to the court’s own evaluation: Woolworths at [33], citing Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at [59] (Branson J).

19    The only issues in this appeal are thus whether the court can be satisfied that:

(a)    the Trade Mark should not have been registered, taking account of all the circumstances that existed when it became registered, including those specified in
s 84A(2) of the Act; and

(b)    is reasonable to revoke the registration, taking account of all the circumstances, including those specified in s 84A(3) of the Act.

THE STATUTORY REGIME AND THE RELEVANT PRINCIPLES

20    Section 84A of the Act is, relevantly, in the following terms:

Power to revoke

(1)    The Registrar may revoke the registration of a trade mark if he or she is satisfied that:

(a)    the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and

(b)    it is reasonable to revoke the registration, taking account of all the circumstances.

(2)    The circumstances to be taken into account under paragraph (1)(a) include the following:

(a)    any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;

(b)    any relevant obligations of Australia under an international agreement;

(c)    any special circumstances making it appropriate:

(i)    not to register the trade mark; or

(ii)    to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.

(3)    The circumstances to be taken into account under paragraph (1)(b) include the following:

(a)    any use that has been made of the trade mark;

(b)    any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;

(c)    other action taken in relation to the trade mark as a registered trade mark;

(d)    any special circumstances making it appropriate:

(i)    to revoke the registration; or

(ii)    not to revoke the registration.

…

No duty to consider whether to revoke

(6)    The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.

(Emphasis added.)

21    The language of s 84A is clear enough, however both parties made reference to the Intellectual Property Laws Amendment Act 2006 (Cth), which introduced s 84A, and the Explanatory Memorandum to that Act. The Explanatory Memorandum includes the following:

6. From time to time, the Registrar registers trade marks that, for one reason or another, should not be registered. These usually occur as the result of an administrative oversight or error. Examples include:

    when grounds on which the trade mark should have been rejected were inadvertently overlooked during examination of the application for registration of the trade mark. Such grounds can include prior registrations of similar trade marks for similar goods and/or services or information indicating that the trade mark is descriptive of the goods and/or services;

…

7. While administrative errors of this sort are rare, they do occur from time to
time …

…

29. Paragraph 84A(1)(a) clarifies that the Registrar is able to take account of any circumstance that existed which should have prevented registration. It is not necessary that the Registrar knew or was in a position to know of the existence of the circumstances for this paragraph to apply. An example of a circumstance of which the Registrar would not have been aware, and could not have been aware, is that of a late notification under the Madrid Protocol. This is a circumstance that the Registrar would be able to take into account when exercising the discretion to revoke registration. An example of a circumstance of which the Registrar may not have been aware, but could have been aware, is when a conflicting trade mark for similar goods and services is not taken into proper account during examination of the application for registration of the trade mark. This is another circumstance that the Registrar would be able to take into account when exercising the discretion to revoke registration.

…

33. Paragraph 84A(2)(a) clarifies that any error of the Registrar may be taken into account in deciding whether to revoke a registration, and that the provision does not refer to a limited class of errors only …

…

47. Subsection 84A(6) clarifies that the Registrar does not have a duty to consider whether to revoke a registration, whether or not the Registrar is requested to do so.

48. This means that third parties will not have a right to urge the Registrar to consider revocation of a trade mark in particular situations. Revocation of registration under section 84A is not intended to provide a way of settling competing claims to ownership of a trade mark. This can be pursued through the courts, with section 86 of the Trade Marks Act providing for the Federal Court to cancel a registered trade mark. Nor is it intended to be a mechanism for parties to file de facto oppositions after a trade mark has been registered. This provision is only intended to provide an administrative mechanism to undo a registration where it was wrongly registered.

49. This subsection will not prevent third parties bringing potentially invalid registrations to the Registrar’s attention. Nor will it prevent the Registrar from considering such submissions and acting on them. It clarifies that the Registrar is under no duty to consider any such input from third parties, so that such parties are not in a position to insist that the Registrar acts on their information. This is reasonable given the other remedies that such parties can access.

(Emphasis added.)

22    The NCF submits, and I accept, that the wording of s 84A makes the following matters clear:

(a)    First, the power to revoke a registration under s 84A is discretionary. This is the effect of the use of the word “may” in s 84A(1)(a), and the express statement that the Registrar does not have a duty to consider revocation in s 84A(6).

(b)    Secondly, before revoking a registration under s 84A, the Registrar must be satisfied that two requirements have been met:

(i)    the impugned mark should not have been registered; and

(ii)    it is reasonable to revoke the impugned mark.

(c)    Thirdly, both of those requirements are to be assessed against all the relevant circumstances. It may also be accepted that the question of whether the mark should have been registered is constrained by the circumstances prevailing at the time of registration, whereas the question of reasonableness has no such temporal constraint.

23    In as much as the Registrar maintains that this construction of the operation of s 84A imposes a gloss on the wording of the section, I do not accept that this is so. In this regard I accept that the word “satisfied” found in s 84A(1) is of particular significance. As the NCF submits, in order to be satisfied of the relevant matters, a positive level of conviction needs to be formed that the Trade Mark should not have been registered and that it is reasonable to revoke it.

24    Insofar as the question of deceptive similarity might arise, I accept that it can readily be recognised that reasonable minds may differ as to whether one mark is deceptively similar to another. As the NCF submits, in some cases such a difference may clearly disclose error. The wrong legal test may be applied, for example. In other cases, such a difference may be the product of evaluative judgments about the differences and similarities between the marks having regard to the context in which they are to be used. I accept that it will be more difficult to show error in respect of such an evaluative exercise. The NCF is correct to submit that the concept of error in s 84A of the Act may be considered as a continuum from clear error to evaluative difference. Where the error is said to be a matter of evaluative difference, it may be accepted that the Registrar would only be “satisfied” that the mark “should not have been registered” where the original evaluation of the mark has clearly miscarried, such that it is not merely a matter about which minds can reasonably differ. It follows that this question of degree will also be relevant to the reasonableness limb of s 84A.

25    The NCF submits and I accept that the legislative scheme suggests that the power under s 84A should be exercised sparingly. It can only be exercised by the Registrar in the 12 months following registration, after which the power to cancel a trade mark registration can only be exercised by the court (ss 84A(4) and 88 of the Act). Further, after the Registrar’s power under s 84A has expired, the Registrar may only apply to the court for cancellation if the Registrar considers the application desirable in the public interest (s 88A of the Act). I accept that this reflects the fact that once a trade mark has become registered, it is a form of statutory property and the registered owner is entitled to rely upon and deal with that proprietary right (as to which see ss 20 to 22 of the Act).

26    There is little authority dealing with the power to revoke under s 84A of the Act. However, the parties referred the court to Re Bobart (2010) 88 IPR 357 (Bobart), in which the Deputy Registrar observed:

[10] The construct of the section itself suggests that revocation is not a decision to be taken lightly. The decision to be made is not simply a question of whether a mistake was made in examining the trade mark. Rather, the registrar must take account of all the circumstance surrounding the registration, whether or not they were known to her at the time. Furthermore, even if she concludes that the trade mark should not have been registered, she must also satisfy herself that “in all the circumstances” it is reasonable to revoke the registration. The need for restraint is reinforced by s 84A(4). This imposes a 12 month time limit within which the registrar is able to effect revocation.

…

[14] At this point it is also appropriate to take account of the status that the Act gives to a registered trade mark. It is personal property (s 21), the owner has the power to deal with the trade mark (s 22) and equities in respect of it may be enforced in the same way as equities in other personal property. The rights arising out of registration include the right to use and to exclude others from use (s 20) and these rights date from the filing date because the registration:

… is taken to have had effect from (and including) the filing date in respect of the application for registration. (section 72)

[15] Thus, from the moment of entry onto the register, the registered owner has property rights dating back to the filing date. This gives rise to a further reason for restraint…

…

[19] … In particular the power should not be regarded as an alternative to the dispute settlement mechanisms otherwise provided by the Act, for resolving competing claims to ownership.

[20] Thus the structure of the section itself, its context within the Act, the nature of the rights affected, and the effect of revocation all require that great caution be used in the registrar’s exercise of this discretion.

…

[55] There will be occasions when different delegates reviewing exactly the same material and applying the same law have a different opinion about the appropriate outcome. It was well established under the provisions of s 38 as they previously existed that “a change of opinion as to the registrability of a mark” did not constitute a basis for revocation of acceptance. There is a continuum between a mere change of opinion as to registrability on the one hand and an error of unreasonableness or jurisdictional error (whether of fact or law) on the other hand. In light of my comments at [11]–[21] above it would not be reasonable, without there being other compelling factors, for the registrar to revoke registration if the question was only one of a change of opinion. For a decision to revoke registration to be reasonable the fault would need to be towards the other end of the spectrum.

(Citations omitted.)

(Emphasis added.)

27    These observations are, with respect, compelling. I accept the NCF’s submissions that they accord with the purpose for which s 84A was enacted (consistently with what is said in the Explanatory Memorandum).

28    Insofar as the Registrar submits that Bobart implies the re-establishment of the requirement for special circumstances, I do not accept that this is so. As the NCF submits, Bobart appropriately recognises that the Registrar must be satisfied that the trade mark should not have been registered. Although in some cases opinions might differ about whether a mark should have been registered, this will generally not meet the standard of satisfying the Registrar for the purposes of s 84A of the Act that the mark should not have been registered. I accept also, as the NCF submits, that in cases where the question of deceptive similarity is finely balanced, it will generally not be appropriate to revoke the registration of the mark because the requisite level of satisfaction is not able to be achieved.

WAS THERE A BASIS TO FIND THE TRADE MARK SHOULD NOT HAVE BEEN REGISTERED?

29    It is the NCF’s position that in this case the first requirement of s 84A of the Act is not met. That is, there is no basis to be satisfied that the Trade Mark should not have been registered.

Was there an error or oversight in the examination process?

30    The NCF submits that there was no error or oversight in the examination process because the examiner considered each of the RND Marks and decided that the Trade Mark was not sufficiently similar to them. This conclusion, the NCF submits, was plainly and properly open to the examiner. It is the NCF’s position that insofar as a competing view was formed by others within IP Australia subsequently, this was not a sufficient basis for the Registrar to be satisfied that the Trade Mark should not have been registered and to exercise the power to revoke.

Was the Trade Mark deceptively similar to any of the RND marks?

31    The parties accept that the only requirement for rejection of the Trade Mark under s 44 of the Act presently relevant is whether it is deceptively similar to the RND marks. The appeal was conducted on this basis.

32    Section 44(2) of the Act is in the following terms:

Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or

(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

33    As the NCF submits, the key question for deceptive similarity under ss 10 and 44 of the Act is whether the Trade Mark “so nearly resembles” one or other of the RND Marks that it is likely to cause confusion.

34    The principles for determining whether one mark is deceptively similar to another are well-established. They were recently re-stated by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (Self Care). As the High Court explained (although in the context of infringement under s 120(1) of the Act):

[28] The question to be asked under s 120(1) is artificial — it is an objective question based on a construct. The focus is upon the effect or impression produced on the mind of potential customers. The buyer posited by the test is notional (or hypothetical), although having characteristics of an actual group of people. The notional buyer is understood by reference to the nature and kind of customer who would be likely to buy the goods covered by the registration. However, the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness arising from the use of the mark prior to filing or, as will be seen, any reputation associated with the registered mark.

[29] The issue is not abstract similarity, but deceptive similarity. The marks are not to be looked at side by side. Instead, the notional buyer’s imperfect recollection of the registered mark lies at the centre of the test for deceptive similarity. The test assumes that the notional buyer has an imperfect recollection of the mark as registered. The notional buyer is assumed to have seen the registered mark used in relation to the full range of goods to which the registration extends. The correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer’s mark (as actually used). As has been explained by the Full Federal Court, “[t]hat degree of artificiality can be justified on the ground that it is necessary in order to provide protection to the proprietor’s statutory monopoly to its full extent”.

…

[37] The starting point is the TM Act. As has been explained, the TM Act provides for the registration of trade marks and sets out and protects the rights deriving from registration. A registered trade mark is personal property and it is the Act that defines the rights that constitute that property, when the rights will come into existence (the date of registration), and what conduct will infringe those property rights. Of particular significance is that the rights that constitute the property — a monopoly — are limited to use of a mark on the particular goods in a particular class, being the goods for which registration was sought and then obtained. It is that registered mark, and that mark alone, which constitutes the property and against which allegedly infringing conduct is assessed. Registration of the trade mark alone confers the right of its exclusive use on the registered owner or, in the case of a defensive trade mark, the right to exclude use. If reputation was considered after registration other than where expressly provided for in the Act, the level of protection afforded to that right would vary and be inherently uncertain.

…

[49] In the application of that test, it is impermissible to attribute to the notional buyer any familiarity with the actual use of a registered trade mark, including any use in relation to goods which are not the subject of the trade mark asserted to be infringed under s 120(1). Put differently, the test cannot be a broad analysis of a potential buyer’s familiarity with all goods related to the trade mark or a broad familiarity with the reputation of the trade mark owner. The inquiry under s 120(1) is directed to avoiding deception and confusion between trade marks, and protecting the registered owner’s trade mark rights in relation to the particular goods covered by the registration. It is not concerned with and does not seek to protect “the commercial value or ‘selling power’ of a mark”.

(Citations omitted.)

(Emphasis added.)

35    To this may be added what is, respectfully, the detailed and coherent summary of the relevant principles set out by Katzmann J in In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (2020) 377 ALR 116 at [74]-[84] (Katzmann J) (In-N-Out).

The NCF’s submissions

36    The NCF submits that the following well-established principles have particular relevance in the present circumstances.

37    First, the comparison is of the respective marks themselves. The comparison assumes a normal and fair use of the respective marks: MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 at 244-246 (Burchett, Sackville and Lehane JJ) (MID Sydney); Woolworths at [88] (French J) and Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661 at [113]-[115] (Nicholas J) (Vivo). See also M Davison and I Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (2022, 7th ed) at [25.1020], [30.1020], [50.2155] and [50.2420]. In making the comparison, it is necessary to consider the circumstances in which the marks will be used and the character of the probable acquirers of the goods or services: Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658 (Dixon and McTiernan JJ); Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 410 (Windeyer J) (Shell). However, matters extraneous to the marks themselves (such as the presence of other marks or indicia, differences in get up, price, quality and the particular manner in which goods/services are promoted or sold) are irrelevant: see MID Sydney at 244-246.

38    Secondly, in comparing word marks, it is necessary to judge the marks in question both by their look and by their sound: Self Care at [26]; Re Application by Pianotist Company Ltd (1906) 1A IPR 379 at 380 (Parker J).

39    Thirdly, it is necessary to look at “all of the elements of the mark in their context, including the size, prominence and stylisation of words and device elements, and their relationship to each other”: PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at [104] (Jagot, Nicholas and Burley JJ). The marks must be judged as a whole having regard to their combination of features, including the arrangement and use of graphic elements, the orientation of the marks and their constituent parts, and their overall shape, geometricity and stylistic impression: see Self Care at [26]; Australian Meat Group Pty Ltd v JBS Australia Pty Ltd (2018) 268 FCR 623 at [71]-[73],[88] (Allsop CJ, Besanko and Yates JJ) (Australian Meat).

40    Fourthly, when assessing the similarities and differences between trademarks, a consideration of whether elements are commonly used or descriptive is relevant because it affects the “significance and weight” to be given to those elements: Australian Meat at [85]. See also, for example, Mond Staffordshire Refining Co Ltd v Harlem (1929) 41 CLR 475 (Knox CJ, Gavan Duffy and Starke JJ); Coca-Cola Co of Canada Ltd v Pepsi Cola Co of Canada (1942) 59 RPC 127; MID Sydney; Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (2022) 407 ALR 93 (Yates, Abraham and Rofe JJ) (Swancom).

41    Fifthly, when dealing with marks featuring descriptive words, “the consumer’s impression and recollection of the registered mark is not to be augmented by knowledge of any factual distinctiveness”: Swancom at [83]; see also Self Care at [28].

42    Sixthly, the test for confusion was stated by Kitto J in Southern Cross Refrigerating Co v Toowomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 (Southern Cross):

It is not necessary … to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough – for there must be a real, tangible danger of its occurring … it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

See also Southern Cross at 604, 608 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ); Woolworths at [50]; In-N-Out Burgers at [75].

The Registrar’s submissions

43    The Registrar accepts that the relevant principles in relation to deceptive similarity are to be found in Self Care, but the following further propositions are advanced as relevant in the present circumstances.

44    First, the test for deceptive similarity is not whether consumers might think the marks are the same, but rather whether there is a real risk that the use of the applied-for mark will cause a number of ordinary persons to wonder whether it might be the case that the two products or services come from the same source (Southern Cross at 594-595, adopted by French J in Woolworths at [43]), or are “in some way allied”: Shell at 416-417.

45    Secondly, there is no limit on the nature of the confusion, and it is sufficient to “cause confusion” if the minds of the public are merely perplexed or mixed up as to the relationship between the two: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [39] (Black CJ, Sundberg and Finkelstein JJ).

46    Thirdly, the “threshold for confusion is not high” (Australian Postal Corporation v Digital Post Australia Pty Ltd (2013) 308 ALR 1 at [70] (North, Middleton and Barker JJ)), and it does not matter if the confusion stops short of actual deception or mistake. It is also irrelevant if the confusion is “unlikely to persist up to the point of, and be a factor in, inducing actual sales”: Southern Cross at 595; Vivo at [115]; Phone Directories Company Australia Pty Ltd v Telstra Corporation Ltd (2014) 106 IPR 281 at [413] (Murphy J).

47    Fourthly, in assessing the prospect of confusion, potential purchasers of the goods or services “are not to be credited with high perception or habitual caution”, although “[e]xceptional carelessness or stupidity may be disregarded”: Woolworths at [49].

48    Fifthly, it is not necessary to establish that confusion is more probable than not, so long as there is a finite, non-trivial danger of confusion: Woolworths at [43]. It is “enough if the ordinary person entertains a reasonable doubt”: Southern Cross at 595.

49    Further, the Registrar submits, one form of commonly accepted confusion is “contextual confusion”, where consumers have cause to wonder whether the goods or services supplied under the marks might be related as a result of “the well-known trade practice of traders in adopting a certain word as a trade mark and constructing other trade marks for distinguishing characteristics of their goods by using such words as a basis and adding thereto prefixes of a qualifying nature”: Re Kodak (Australasia) Pty Ltd (1936) 6 AOJP 1724, quoted in Instagram LLC v Instagoods Pty Ltd (2021) 164 IPR 351 at [27]. See also Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 113 and Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 at 232 (Burchett J). In such a case the use of an “essential feature” of the registered mark will be sufficient to give rise to confusion: de Cordova v Vick Chemical Company (1951) 1B IPR 496 at 499 (Lord Simonds, Lord Morton of Henryton, Lord MacDermott, Lord Radcliffe and Sir John Beaumont); Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 at [79] (Moore, Sackville and Emmett JJ) (Crazy Ron’s).

50    The Registrar contends that the delegate was correct to conclude the Trade Mark is deceptively similar to the RND marks. Specifically, the Registrar contends that the Trade Mark is deceptively similar to both the RED NOSE DAY mark and the other marks that make up the NOSE DAY series.

51    Consistently with the principles advanced by the Registrar, it is said to be well-established that the substitution of qualifying words within an otherwise distinctive combination can result in two marks being deceptively similar, on the basis that they appear to be variants of each other or part of a common “family” of marks.

52    The Registrar submits that in this case it is clear that the combination of colour name plus NOSE DAY is highly distinctive in the context of charitable and fundraising services. While there is evidence of other organisations using DAY in the context of fundraising activities, the Registrar submits that there is very limited evidence of any other organisation ever using the words NOSE DAY in that context, and no evidence of any other organisation using the combination of a colour name plus NOSE DAY at any time.

53    The Registrar submits that in cross-examination Professor Melnyk accepted that the evidence provided to her about other NOSE DAY uses did not provide a reliable basis to draw any conclusions about the perceptions of the typical Australian consumer or Australian consumers generally. The Registrar submits that Professor Melnyk also accepted that it was likely that there were consumers in Australia who were not aware of either of the other NOSE DAY events mentioned in her affidavit (one of which, HAIRY NOSED DAY, she agreed did not use NOSE DAY in its name and was likely to be understood as a reference to the hairy-nosed wombat).

54    Further, the Registrar submits that it cannot be said that the combination of colour name plus NOSE DAY has any descriptive meaning in the context of such services. Although NOSE is accepted to be a common word with a well-understood meaning, the concept of a NOSE DAY is submitted not to be one that describes any kind, quality, or characteristic of charitable or fundraising services. The Registrar submits that it is therefore inherently adapted to distinguish such services: see Energy Beverages LLC v Cantarella Bros Pty Ltd (2023) 407 ALR 473 at [167] (Yates, Stewart and Rofe JJ).

55    In those circumstances, the Registrar submits, it must be that the notional consumers of such services will at least have cause to wonder whether or not it might be the case that fundraising services offered under the trade mark BROWN NOSE DAY are in some way associated with or related to the fundraising services (notionally) offered under each of the trade marks RED NOSE DAY, WHITE NOSE DAY, BLACK NOSE DAY, BLUE NOSE DAY, YELLOW NOSE DAY or GREEN NOSE DAY (all of which must be taken to come from the same source).

56    In that context, the Registrar submits, it is apparent that the colour designation in each mark would likely be seen as serving a primarily descriptive function, denoting a different form of fundraising activity from the owner of the coloured NOSE DAY marks, rather than indicating a separate trade source. It is said that to the extent the opinion of Professor Melnyk is to the contrary, it must be assessed in light of the fact that:

(a)    her opinion is based on an assumption about common usage of the NOSE DAY formulation in the context of charitable services, and a consumer perception about NOSE DAY as a “sub-category” of charity, which is not made out on the evidence; and

(b)    it fails to take account of the notional usage of the various marks that make up the NOSE DAY series, or the perception of the hypothetical consumers who must be taken to be aware of that usage in connection with charitable services: see Self Care at [28].

57    In this sense, the Registrar submits, Professor Melnyk’s evidence illustrates the danger of arrogating to an expert the “jury question” (see General Electric Co (of USA) v General Electric Co Ltd (1972) 1B IPR 543 at 567 (Lord Diplock)). Such question is ultimately reserved for the court – particularly when it comes to cases which “require the Court to decide for itself issues of characterisation and evaluation against legal standards” – and the reason why the courts have traditionally been so reluctant to place any weight on such evidence: Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 at [193]-[194] (Wheelahan J)).

58    The Registrar submits that the fact that BROWN NOSE has a colloquial meaning is also not sufficient to remove the likelihood of confusion. In this respect the Registrar concedes that while it is possible that some consumers will know and recall the meaning relied on by the NCF (a “sycophant” or “self-seeking servile flatterer”), it is not an obvious or natural association in the context of the services for which registration is sought (being charitable fundraising). Accordingly, the Registrar submits it is highly likely that a large number of consumers will not make the association, or if they do, will not think it applies in the context of the services for which the mark is to be used.

59    In this sense the Registrar submits that the present case is analogous to the decision of Katzmann J in In-N-Out, where her Honour held that the fact that “down and out” had an established meaning (as someone disreputable or pitiable) (at [126]) was not sufficient to avoid the prospect of confusion arising: In-N-Out at [110],[154]-[157]. The Registrar refers also to the fact that her Honour noted that “meanings can change according to context” (In-N-Out at [110]), and that focussing on the idea or impression created by the respondents’ marks was apt to distract attention from the real question, which was whether people with an imperfect recollection of the applicant’s marks might be confused or deceived when coming across the respondents’ marks (at [110]). The Registrar submits that Katzmann J emphasised that what mattered was the fact that the respondents’ marks were being used with respect to the same kind of goods and services as those for which the applicant’s marks were registered, and held that in that context consumers were likely to make a connection between the marks: In-N-Out at [154]-[155]; approved on appeal in Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc (2020) 385 ALR 514 at [78]-[84] (Nicholas, Yates and Burley JJ). It is said that the same analysis applies here; see also E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69 at [58]-[63] (Flick J).

60    The Registrar submits further that even if consumers do draw an association with the meaning identified by the NCF, there is no inconsistency between that meaning and there being an association between the Trade Mark and the other coloured NOSE DAY marks, having regard to the close similarities between the structure of the marks, the identical nature of the services to be offered under the marks, and the distinctiveness of the colour name plus NOSE DAY combination in that context. In particular, the Registrar maintains, it cannot be said that the putative meaning fundamentally changes the identity of the BROWN NOSE DAY mark, such that consumers would no longer regard the mark as conveying the idea of a coloured NOSE DAY at all.

61    The Registrar submits that the fact that charitable donations are a highly involved category does not prevent consumers from having cause to wonder whether the services offered under the marks are related when they first come across the Trade Mark in the context of fundraising services. It is said to be irrelevant that they may realise that there is no connection before they proceed to make their donation. Indeed, the Registrar submits that the court will in the usual course place significant weight on the first impression of the respondent’s mark, recognising that once a person has become familiar with two marks they may be unlikely to be confused, but at the point that a person is first exposed to the mark, confusion may well occur: Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) (2013) 308 ALR 74 at [80] (Robertson J); see also Crazy Ron’s at [77].

62    For these reasons the Registrar contends that the Trade Mark is deceptively similar to the RND marks, and that therefore the Trade Mark should have been rejected under s 44 of the Act. Accordingly, the Registrar submits that on this basis the delegate was correct to conclude that the requirements of s 84A(1)(a) of the Act are satisfied in relation to the Trade Mark.

The Trade Mark is not deceptively similar

63    Notwithstanding the detailed and comprehensive submissions advanced by the Registrar, I have concluded that the Registrar ought not to have been, and that I am not, satisfied that the Trade Mark is deceptively similar to any of the RND Marks, essentially for the reasons advanced by the NCF.

64    First, I accept that the word BROWN readily distinguishes the Trade Mark (visually, orally, and conceptually) from the RND Marks, none of which contain the word BROWN at all. I agree that this is of particular significance because the word BROWN is the first word in the Trade Mark. Professor Melnyk’s evidence was that “decades of research indicate that colour is a very important consumer differentiator that works both consciously and unconsciously.” It was also her evidence that “Australian consumers are educated and trained through experience to distinguish similar charitable fundraising campaigns through the use of a feature like colour, within sub-categories of charity "day" events.” I accept that this is so.

65    Secondly, and also significantly, the commonly understood and distinct colloquial meaning of the words BROWN NOSE (that is to say, someone who is a sycophant, or someone who flatters or tries to carry favour) strongly distinguishes the Trade Mark as to its meaning and the concept it conveys from the RND Marks. I accept, as the NCF submits, that the ordinary meaning of BROWN NOSE points strongly away from any connection at all with the RND Marks and gives the Trade Mark a distinctive meaning and import. I accept that once this is recognised it is hard to understand how the Trade Mark (which rests strongly on the words BROWN NOSE) could be said to evoke the RND Marks.

66    Similarly, I accept that RED NOSE also has a distinct and well-known connotation with respect to comedy, often being associated with clowns. I agree that this meaning also points away from any connection with BROWN NOSE DAY.

67    Thirdly, I accept that the evidence of Mr Thompson established that it is common for trade marks used in connection with awareness and charitable fundraising campaigns to focus on a specific time period, such as a “day”, a “week” or a “month”. Common experience suggests that this is so. For example, Red Nose Day (SIDS), Daffodil Day (Cancer Council) and Wet Nose Day (Guide Dogs). As well as this, the examples referred to by Mr Thompson also show that it is common in awareness and charitable fundraising campaigns for trade marks to combine a colour, an object and a time period (such as White Ribbon Day, Red Rose Day and Gold Bow Day). This also equates with common experience. Professor Melnyk’s evidence was that she would “expect consumers would readily identify that in the charitable fundraising sector, a different colour signifies a different fundraising campaign and charity.” I accept that the effect of this is that, when comparing the Trade Mark and the RND Marks, the word “day” should be given less significance: see Swancom at [47], [93]-[94] and [103]. I accept also that the analysis of deceptive similarity should recognise that members of the public are adept at distinguishing between marks with such structures, particularly by using an associated colour word.

68    Fourthly, I accept Professor Melnyk’s evidence that charitable donations are a highly involved category leading consumers to give careful consideration to what donations they might make. Professor Melnyk’s opinion, which resonates, was that “consumers will try to make sense of the differences between trade marks associated with charitable causes, and use those differentiators to navigate a highly saturated space of the different charities.”

69    For these reasons, the Registrar’s submission that the Trade Mark is deceptively similar to the RND Marks must be rejected. Insofar as the Registrar has relied on the concept of “contextual confusion”, I accept the NCF’s submissions that these contentions are misplaced. I accept also that there is no well established principle that the substitution of qualifying words within an otherwise distinctive combination can result in two marks being deceptively similar, on the basis that they appear to be variations of each other or part of a common “family of marks”. As the NCF submits, such a submission sits uncomfortably with the decision of the High Court in Self Care which emphasises that the resemblance between the two marks must be the cause of the likely deception or confusion. In any event, I accept that it would be illogical if such an argument were available in respect of the RNL series mark (trade mark number 530371) for the reasons advance by the NCF.

70    Finally, I accept, for the reasons advanced by the NCF, that the decision of Katzmann J in In-N-Out can be readily distinguished on the facts from the circumstances as they exist in the present case.

WAS IT REASONABLE TO REVOKE THE REGISTRATION?

71    In light of my conclusion that the Trade Mark is not deceptively similar to any of the RND Marks and thus there was no basis to find that it should not have been registered, it may be unnecessary to canvass the question of reasonableness by reference to the various further matters raised by the NCF. Nonetheless, in defence to the parties’ detailed submissions on this subject I make the following observations.

72    First, although it may be accepted that the investment the NCF has made in the Trade Mark is not substantial, I would not characterise that investment (as the Registrar has done) as
de minimus. I accept that a significant element of the public interest which it is relevant to consider in the revocation process is any adverse impact that revocation may have on the trade mark owner. I accept also, as the NCF submits, that the deprivation of statutory property is a serious matter that ought not be undertaken lightly and in a manner that lacks rigour.

73    Secondly, insofar as the actions of IP Australia standing in the shoes of the Registrar are concerned, the following may be said. Although at one level it may be that, unfortunately, there were substantial and unexplained delays in the process as well as certain delays in the provision to the NCF of documents and information, I do not consider that these matters are of central relevance on the question of reasonableness in circumstances where there has been no use of the Trade Mark and the role of the court is to determine the issues on their merits. The delays to which the NCF has pointed, while regrettable, are not matters which I would regard as providing a basis to conclude that it was not reasonable to revoke the registration. I note, in this regard, the observations of Wheelahan J as to resourcing, albeit in a different context, in Patrick v Australian Information Commissioner (No 2) [2023] FCA 530 at [200]-[201]; see also Patrick v Australian Information Commissioner (2024) 304 FCR 1 at [67]-[70] (Bromwich, Abraham and McEvoy JJ).

74    Thirdly, insofar as the intervention of the owner of the RND Marks, RNL, is concerned, I incline to the view that, notwithstanding the NCF’s submissions, this is not relevant to the question of whether it is reasonable to revoke the registration of the Trade Mark.

75    Fourthly, I accept the NCF’s submission that the Notice was issued in circumstances where there were differences of opinion within IP Australia, rather than because of an error or oversight on the part of the examiner, and that to proceed to revoke on this basis was not reasonable. Section 84A of the Act was intended to allow for the correction of administrative oversight or error. The example given in the Explanatory Memorandum at [6] is where grounds on which the trade mark should have been rejected were inadvertently overlooked in the examination of the application. I agree that differences of opinion, absent other compelling factors, will not usually be sufficient to revoke registration and that revocation by reason only of the later emergence of different views may well be capable of being characterised as unreasonable, as here.

76    Finally, and relatedly, I also accept the NCF’s submission that there is a public interest in the integrity of the examination process. Those who have obtained registration should generally be able to proceed with certainty and confidence. A difference of opinion within the Trade Marks Office should not ordinarily be sufficient for the power to revoke to be exercised.

CONCLUSION

77    In circumstances where there is no basis to find that the Trade Mark should not have been registered and it was not reasonable to revoke the registration, the appeal must be allowed.

78    The parties were in agreement that costs should follow the event, and so there will be an order that the Registrar pay the NCF’s costs of and incidental to the appeal as agreed or assessed.

Associate:

Dated:    30 June 2025