Trade Marks – application for revocation action under section 84A of the Trade Marks Act 1995 (Cth)
This case concerns an action for revocation of the registration for the trade mark “BROWN NOSE DAY” (the Trade Mark) in respect of “charitable fundraising” services in class 36.
The application was brought by the Registrar of Trade Marks (the Registrar) under section 84A of the Trade Marks Act 1995 (Cth) (the Act). Section 84A of the Act provides that the Registrar may revoke registration of a trade mark where she is satisfied that the trade mark should not have been registered, having regard to the circumstances that existed when it became registered, and it is reasonable to revoke the registration taking account of all the circumstances. Such an action may be brought within 12 months of registration.
The National Cancer Foundation (the NCF) had adopted the “Brown Nose” theme in 2020 for bowel cancer fundraising and awareness. The expression, described by Justice McEvoy as plainly confronting, was adopted as an opportunity to use a mixture of humour, shock, affront, and concern to raise awareness of bowel cancer.
The NCF filed an application to register the Trade Mark and 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. Those marks included various RED NOSE DAY marks (the RND marks). The RND marks included 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. Nevertheless, 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. No opposition was filed.
After registration, the solicitors for RNL wrote to the Registrar requesting the revocation of the Trade Mark under section 84A of the Act on the basis that the examiner had erred in failing to raise a section 44 objection during the examination process. Following a hearing, the Registrar decided to revoke the Trade Mark. The NCF appealed, pursuant to section 84D. RNL sought, unsuccessfully, to intervene in these proceedings in October 2023.
His Honour had regard to the wording in section 84A(1), namely that the Registrar needed to be “satisfied” that the mark should not have been registered and that it is reasonable to revoke it. Agreeing with the NCF, his Honour said that to be “satisfied” of the relevant matters, a positive level of conviction is required. Having regard to the limited authority in relation to section 84A (principally being Re Bobart (2010) 88 IPR 357 ), his Honour concluded that where, as here, 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.
Justice McEvoy found 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 original examination process. Further, he concluded that the Trade Mark was not deceptively similar to any prior marks of the RND marks.
His Honour conducted a detailed analysis of deceptive similarity, determining that the NCF was correct to submit that the concept of “error” in section 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 – which does not arise if the question is a matter about which minds can reasonably differ. His Honour said this question of degree will also be relevant to the reasonableness limb of section 84A.
His Honour ultimately agreed with the NCF, concluding that the marks were not deceptively similar. The word BROWN readily distinguished the Trade Mark (visually, orally, and conceptually) from the RND Marks, none of which contained the word BROWN at all. The word brown was the prefix and colour has regularly been used in Australia as a differentiator. His Honour also accepted expert evidence stating 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.”
Further, his Honour agreed that the commonly understood and distinct colloquial meaning of the words BROWN NOSE (i.e., someone who is a sycophant, or someone who flatters or tries to carry favour) strongly distinguished the Trade Mark as to its meaning and the concept it conveys from the RND Marks. Similarly, RED NOSE also has a distinct and well-known connotation with respect to comedy, often being associated with clowns. This pointed away from Brown Nose Day. The authors note that the Court’s focus on the colloquial meaning of the phrase is sensible, but somewhat difficult to reconcile with the approach taken in Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; 385 ALR 514, where the Full Court upheld the decision that the appellants had infringed the composite mark by its use of DOWN-N-OUT.
His Honour also accepted it was 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”. His Honour accepted expert evidence that a different colour signifies a different fundraising campaign and charity. Justice McEvoy found that the effect of this evidence was that, when comparing the Trade Mark and the RND Marks, the word “day” should be given less significance (picking up on similar comments in Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (2022) 407 ALR 93 at [47], [93]-[94] and [103]). Moreover, his Honour also accepted expert evidence that charitable donations are a highly involved category leading consumers to give careful consideration to what donations they might make.
Justice McEvoy’s comments on contextual confusion were particularly of note. The Registrar had relied upon contextual confusion, arguing that this was one form of commonly accepted 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”. Justice McEvoy agreed with the NCF’s submissions that these contentions were misplaced. He accepted 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”. His Honour agreed with the NCF that 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.
For completeness, his Honour also considered whether it was reasonable to revoke registration, concluding it was not. His Honour accepted that revocation is not reasonable where there has been some level of investment in the Trade Mark and where there were legitimate differing views within IP Australia itself as to whether the Trade Mark was deceptively similar to any of RNL’s prior marks. Revocation was an extreme measure to be exercised only with caution and where clear error or oversight is demonstrated. This was not such a case.
The case shows that revocation under section 84A of the Act is to be used only in clear cases. Differences of opinion within IP Australia about whether marks are deceptively similar absent other compelling factors, will not usually be sufficient to revoke registration. As his Honour concluded, revocation by reason only of the later emergence of different views may well be capable of being characterised as unreasonable. His Honour agreed with the NCF that there is a public interest in the integrity of the examination process and those who have obtained registration should generally be able to proceed with certainty and confidence.