error

In Brown Nose Day, the Full Court agreed with the primary judge that BROWN NOSE DAY is not deceptively similar to RED NOSE DAY (etc.) and also clarified the scope of the Registrar of Trade Marks’ shocking power to revoke a trade mark once it is registered.[1]

• Background
• The primary judgment
• The Full Court
  • When is the Registrar “satisfied”
  • What’s an error
  • Deceptive similarity

Under s 84A of the Trade Marks Act 1995, three conditions must be satisfied:

(1) The Registrar must be satisfied that the trade mark should not have been registered in all the circumstances including circumstances not known to the Registrar at the time of registration;

(2). The Registrar must also be satisfied that it is reasonable to revoke the registration in all the circumstances; and

(3) The Registrar must have given the owner of the trade mark notice of her intention to revoke within 12 months of the trade mark being registered (that is, entered on the Register, not the filing date or the priority date).

Section 84A(2) sets out a non-exhaustive list of things to consider in deciding whether or not the trade mark should have been registered. This list includes “any errors (including errors of judgment) or omissions that led directly or indirectly to the registration”.

This power, along with an expanded power to revoke acceptance under s 38, had been introduced by the Intellectual Property Law Amendment (Raising The Bar) Act 2012.

Background

The National Cancer Foundation (NCF) raises funds to support cancer prevention and treatment. To promote its program to raise funds for bowel cancer research and awareness, it adopted the “Brown Nose” theme. (One might think this could be counter-productive but apparently it was chosen for its shock value). It applied to register TM No 2086028, BROWN NOSE DAY, for charitable fundraising services.[2]

The Examiner considered whether or not to object under s 44 on the basis of Red Nose Limited’s prior registered trade marks:

and TM No 530371 for a series mark comprising RED NOSE DAY, WHITE NOSE DAY, BLACK NOSE DAY, BLUE NOSE DAY, YELLOW NOSE DAY AND GREEN NOSE DAY (the emphasis is mine, the marks are in plain block capitals).

The Examiner considered BROWN NOSE DAY was not deceptively similar to these trade marks and, in due course, the trade mark proceeded to registration on 15 December 2020. No opposition was filed following acceptance.

On 25 October 2021, however, Red Nose Limited wrote to the Registrar requesting that the BROWN NOSE DAY registration be revoked. The Deputy Registrar wrote to NCF on 16 November 2021 informing that it was proposed to revoke the registration because BROWN NOSE DAY was deceptively similar to Red Nose’s trade marks and should not have been registered. The Registrar maintained this position and, after a hearing, the trade mark was revoked. (As a side note, NCF had sought production of the Registrar’s documents relevant to the decision to revoke but it turned out there were no such documents.)

NCF appealed.

The primary judgment

The primary judge noted that this was not a case of inadvertant acceptance. This was not a case where Red Nose Limited’s prior registered trade marks had been overlooked. They had been identified and considered. This was also not a case where the wrong legal test had been applied. In this case, there had been a difference of opinion between the Examiner’s view and the Deputy Registrar’s (and also the Hearing Officer).

This was significant as the question of deceptive similarity being an evaluative exercise was one where reasonable minds could differ. In such a case, the primary judge considered that the concept of “error” triggering the power under s 84A presented a “continuum”. His Honour explained at [24]:

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. …. (emphasis supplied)

The primary judge then went on to find that BROWN NOSE DAY was not deceptively similar to Red Nose Limited’s trade marks so the power to revoke did not arise.

In obiter remarks on whether it would have been reasonable to revoke the registration, the primary judge at [74] inclined to the view that Red Nose Limited’s initiation of this procedure (instead of opposing or seeking revocation in the Court) was not a relevant consideration.

At [76], the primary judge accepted that there is a public interest in the integrity of the examination process so that a person who has obtained registration “should generally be able to proceed with certainty and confidence.” In that context, the primary judge concluded:

A difference of opinion within the Trade Marks Office should not ordinarily be sufficient for the power to revoke to be exercised. (emphasis supplied)

The Registrar appealed

The Full Court

In the result, the Full Court upheld held the ruling that NCF’s trade mark was not deceptively similar to the Red Nose Limited’s trade marks so there was no basis to revoke the registration. Of more general significance, however, the Full Court rejected the primary judge’s approach to deciding whether or not there was an error. Specifically, the Full Court rejected the idea of attempting to place the claimed error on a continuum from “clear error to evaluative difference”.

When is the Registrar “satisfied”

The Full Court began by pointing out that the Registrar had to be “satisfied” about both elements of s 84A(1). Their Honours noted this standard required the Registrar (or her delegate) to form the required state of mind “reasonably and on a correct understanding of the Act.”

At [68], the Full Court endorsed Branson J’s explanation of the standard in Blount as equally applicable under s 84A:

Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfek v McElroy (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

What’s an error

Turning to what constitued an “error”, the Full Court accepted that the Trade Marks Act is concerned with certainty but, at [59], “it is also strongly concerned with the public interest in the purity or accuracy of the Register as a record of ‘marks which perform their statutory function’”.[3] (emphasis supplied)

While the Full Court accepted that a question of deceptive similarity is one about which reasonable minds can differ, their Honours emphasised at [78] – [82] that there is only one uniquely correct outcome. Accordingly, the objective test for deceptive similarity, while contestable, did not mean there was “a zone of choice”.[4] What it did mean is that there is an objectively right answer so that, if the Registrar was satisfied BROWN NOSE DAY was deceptively similar to Red Nose Limited’s trade marks, the Examiner’s acceptance of BROWN NOSE DAY in the face of those prior registrations was an error.

Consequently, at [84] – [87] trying to characterise the issue as “a mere difference of opinion” was wrong. Further, it introduced a requirement into s 84A(1)(a) for which there was no basis in the wording, context and purpose of the section. Section 84A(2)(a) specifically stated “any errors (including errors of judgment)” were matters which could trigger the power. The Explanatory Memorandum also contrasted the new terms to the limited “special circumstances” previously applicable for revocation of acceptance and stated the intention was for the power to be available against any error. The question under s 84A(1)(a) was simply whether the Registrar was satisfied there had been an error.

In response to NCF’s argument that the power should be used sparingly as registration conferred a statutory right which the owner could rely on, the Full Court bluntly pointed out it was a statutory right that was subject to the terms of the statute, including in particular s 84A.

Although the Full Court rejected relevance of the evaluative nature of the deceptively similarity inquiry to determining whether or not there had been an error, their Honours went on say the nature of the error could be relevant to the assessment of whether it was reasonable to exercise the power to revoke. At [99], s 84A(1)(b) “is an unconfined invitation consider [all] matters which are releant to the question of whether it is relevant to revoke the registration.”

Deceptive similarity

As already noted, the Full Court upheld the primary judge’s ruling that BROWN NOSE DAY was not decpetively similar to Red Nose Liited’s trade marks. There was evidence that charities often used “day” in connection with their fund-raising activities. There was not evidence of common use of “nose day”. Considering the trade mark as a whole, however, the “somewhat confronting” colloquial meaning of “brown nose” meant there was not sufficient likelihood of confusion. Their Honours explained at [113]:

…. We are satisfied that the (somewhat confronting) meaning of those words in combination mean that they will not be read in that disaggregated way by consumers. Thus, we are satisfied that, having regard to the particular meaning and impact of “brown nose”, consumers will not read the Trade Mark as a “colour [nose] day”. They will instead read BROWN NOSE as a phrase that carries a particular and distinct connotation which separates it from [Red Nose Limited’s marks]. We are satisfied that the (somewhat confronting) meaning of those words in combination mean that they will not be read in that disaggregated way by consumers. Thus, we are satisfied that, having regard to the particular meaning and impact of “brown nose”, consumers will not read the Trade Mark as a “colour [nose] day”. They will instead read BROWN NOSE as a phrase that carries a particular and distinct connotation which separates it from [Red Nose Limited’s marks].

Interestingly, the Full Court at [115] described as obiter the primary judge’s rejection as inconsistent with Self Care the suggestion that BROWN NOSE DAY would be seen as part of a family of Red Nose Limited’s trade marks.[5] Rather, the primary judge’s rejection of the contention was seen to be based on the absence of evidence that any charity used more than one colour to distinguish its services and, in particular (and despite its series registration), that Red Nose Limited used any colour other than red. Apparently accepting that contextual indicators could be relevant, at [117] their Honours noted that “colour is a key consumer differentiator” and said:

While we do not accept that contextual indicators will always require evidence to establish the potential for contextual confusion, this is a case where the evidence referred to in the submissions of the Respondent extracted above, tended to suggest that there would not be such confusion.

It remains to be seen whether Red Nose Limited takes on the onus of trying to revoke the registration under s 88.

Registrar of Trade Marks v National Cancer Foundation Limited [2026] FCAFC 95 (Markovic, Needhan and Bennett JJ)

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1. The Registrar has a similar power to revoke acceptance under s 38.  ?
2. It now has applications pending for goods in classes 16, 25 and 30. These have been opposed by Red Nose Limited. IP Australia’s website indicates in September 2024 hearing dates were set down but presumably they have not proceeding pending the outcome of this case.  ?
3. Citing Foxtel Management Pty Limited v Registrar of Trade Marks [2019] FCA 605; 141 IPR 445 at [36] and Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590 at [23] – [26].  ?
4. Citing Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156 at [134] and Firstmac Limited v Zip Co Limited [2025] FCAFC 30 at [94].  ?
5. At [26] in Self Care the High Court said of deceptive similarity “The essential task is one of trade mark comparison; the resemblance between the two marks must be the cause of the likely deception or confusion. In evaluating the likelihood of confusion, the marks must be judged as a whole, taking into account both their look and their sound.” In one of the cases the High Court cited, Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 538, the High Court did reject the asserted common conceptuality of the competing marks, RAIN KING vs RAINMASTER, for water sprinklers but that was because the look and sound of the two marks was so different that a finding of deceptive similarity would give the owner “a complete monopoly of all words conveying the same idea as his trade mark.”  ?