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Revoking “Brown Nose Day”: Why the Federal Court Drew the Line on Section 84A

It was always going to be a cheeky choice — BROWN NOSE DAY for a bowel cancer fundraiser — but was it unlawfully close to RED NOSE DAY and its colourful cousins?

IP Australia thought so. The Federal Court? Not so much.

🧵 Background

In 2020, the National Cancer Foundation (NCF) registered BROWN NOSE DAY for charitable fundraising (Class 36). Red Nose Limited (RNL), owner of RED NOSE DAY and a series of colour+NOSE DAY marks, didn’t oppose at the time. But a year later, they persuaded the Registrar to revoke the registration under s 84A of the Trade Marks Act 1995 (Cth).

Section 84A allows the Registrar to revoke a registration within 12 months if:

  1. The mark should not have been registered, and

  2. It’s reasonable to revoke it — considering all circumstances.

Unhappy with the Registrar’s post-registration change of heart, NCF appealed — arguing that this wasn’t about oversight or error, but a mere difference of opinion between the original examiner and the Registrar … which is not what s 84A is for. It’s not a licence for bureaucratic regret.

🧠 The Court’s Take

Justice McEvoy handed down judgment on 30 June 2025 agreeing with NCF.  Why?

🟥 No Deceptive Similarity

  • BROWN clearly distinguished the mark.

  • The phrase “brown nose” has a well-known colloquial meaning (a sycophant), giving it a very different conceptual feel from RED NOSE DAY (which is culturally associated with clowns and SIDS fundraising).

  • Consumers are used to colour-coded charity events — they expect different colours to mean different causes.

🛠️ No Examiner Error

  • The examiner had considered RNL’s marks and approved the application.

  • A later disagreement within IP Australia wasn’t enough to show the mark should not have been registered.

  • Section 84A is for fixing genuine oversight — not second-guessing judgment calls.

⚖️ Revocation Not Reasonable

  • NCF had invested time and resources into launching the campaign.

  • Revoking the mark just because others in the Office saw things differently risks undermining confidence in the register.

  • Revocation, said the Court, is a “serious matter” — not to be exercised lightly or inconsistently.

📌 Key Takeaways

  • Deceptive similarity is more than visual resemblance — conceptual meaning and consumer behaviour matter.

  • Section 84A is a surgical tool, not a blunt instrument. It targets genuine administrative error — not internal disagreement.

  • Certainty matters. If IP Australia can revoke marks based on shifting views, the trade marks register becomes unstable ground.

💬 As McEvoy J put it:
“A difference of opinion within the Trade Marks Office should not ordinarily be sufficient for the power to revoke to be exercised.”

🧠 Bottom Line:
Want to challenge a registered mark after the opposition window closes? You’ll need more than a stronger opinion. Section 84A isn’t a second chance — it’s a narrow exception. This case draws a clear line: revocation ≠ backdoor opposition.

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IMMIGPT Blocked: OpenAI’s GPT Reputation Stops Immigration Trade Mark

What happens when you take a world-famous tech acronym and bolt it onto your own business name?

An Australian migration services provider just found out — the hard way — that riding the coat-tails of GPT’s fame can sink your trade mark application, even outside the tech sector.

The Players

  • OpenAI OpCo LLC – creator of GPT, ChatGPT, and other AI products with global reach.

  • Realoz International Pty Ltd – provider of immigration and legal services, trading via a platform called “IMMIGPT”.

The Mark and the Fight

Realoz applied to register IMMIGPT in Class 45 for migration and immigration services.

OpenAI opposed on multiple grounds, but ran s 42(b) (contrary to law) and s 60 (reputation) at the hearing.

The Delegate focused on s 60 — whether OpenAI’s GPT marks had a reputation in Australia before 25 April 2023, and whether that reputation made confusion likely.

Reputation in Overdrive

OpenAI launched GPT in 2018, then GPT-2, GPT-3, GPT-4. In November 2022, ChatGPT arrived and “exploded in popularity”, becoming the fastest-growing consumer app in history — hitting 100 million monthly users in two months.

By the relevant date:

  • Australians were using ChatGPT in law, architecture, retail, beauty, marketing, accounting — and for everything from recipes to speechwriting.

  • The media coverage was intense; even those who hadn’t tried it had heard of it.

The Delegate found substantial reputation in both GPT and ChatGPT in Australia.

Why Confusion Was Likely

Realoz argued GPT was just a descriptive acronym (“generative pre-trained transformer”) and that it had a disclaimer on its site disavowing any link to OpenAI.

The Delegate disagreed because:

  • Most Australians wouldn’t know GPT’s technical meaning.

  • Even if they did, they’d still associate it with OpenAI.

  • “IMMIGPT” mirrored the ChatGPT construction — suggesting an “immigration” version of ChatGPT or immigration services powered by OpenAI’s GPT software.

  • The Applicant had agreed to OpenAI’s T&Cs — so it clearly knew about the marks.

The result? A significant number of consumers would be likely to wonder if IMMIGPT was connected to OpenAI.

The Decision

  • s 60 established — registration refused.

  • Costs awarded against the applicant.

IP Mojo Takeaways

  1. Fame Spreads Fast – A trade mark can acquire reputation in months if public uptake is explosive.

  2. Tech Acronyms Aren’t Neutral – If the public recognises an acronym as a brand, expect trouble using it — even for unrelated services.

  3. Construction Counts – Mimicking a famous brand’s naming pattern (“___GPT”) invites an association in consumers’ minds.

  4. Disclaimers Don’t Cure Confusion – If your name suggests a link, a footnote won’t save you.

Citation: OpenAI OpCo LLC v Realoz International Pty Ltd [2025] ATMO 141

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What’s in a Name? Paige LLC Fails to Block “Sage + Paige” Despite Collab Confusion Claims

In a decision straight from the catwalk of modern trade mark law, the Federal Court has dismissed a challenge by Californian fashion label Paige LLC against the Australian brand Sage + Paige, ruling that the newer composite marks are not deceptively similar to PAIGE and won’t mislead fashion-savvy Aussie consumers.

Decision: Paige LLC v Sage and Paige Collective Pty Ltd [2025] FCA 750 (10 July 2025) (Needham J)

👗 Background: Denim v Dresses

Paige LLC, known globally for its premium denim and celeb collabs, owns the trade mark PAIGE in Australia. When Aussie fashion house Sage and Paige Collective Pty Ltd applied to register two composite trade marks—Saige + Paige (stylised with a pink circle) and Sage + Paige (stylised, but text-only)—the US company objected under:

  • Section 44: deceptive similarity to its PAIGE marks, and

  • Section 60: likelihood of confusion due to its established reputation.

The core argument? That the “+” sign in Sage + Paige might lead consumers to believe it’s a collaboration with PAIGE—a well-known practice in fashion.

⚖️ The Court’s Take

Justice Needham accepted that brand collaborations (or “collabs”) are indeed a recognised trend, and the notional consumer might think of such things. But that wasn’t enough.

“The use of two names with the same stylisation tend to indicate… a singular brand name, rather than two separate, collaborating, brand names.” — Needham J at [89]

Despite PAIGE having a modest reputation in Australia, the Court found no real, tangible danger of deception or confusion. The composite marks were deemed to stand on their own: visually unified, aurally distinct, and conceptually grounded in a “two names, one brand” tradition, not a collab cue.

🧵 Key Takeaways

  • “+” doesn’t equal collab: Just linking two names with a plus sign doesn’t automatically imply co-branding, even in industries where collabs are common.

  • Given names don’t always dominate: Paige is not an invented or highly distinctive term; it’s just a given name, and its presence doesn’t override the overall impression.

  • Stylisation and consumer habits matter: The Court looked at actual branding trends and consumer practices (like buying online and familiarity with fashion collabs).

🪡 The Bottom Line

This is a rich example of the law stitching together traditional principles of deceptive similarity with modern commercial practices. It shows how context—consumer knowledge, industry trends, brand stylisation—can make or break a trade mark opposition, even where name overlap exists.

For now, Sage + Paige gets to strut the IP runway without tripping over PAIGE’s heels.

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Brand Control, Part 10: “The Brand Lives On” — Trade Marks in Exit, Investment, and Succession

Your brand might be your single most valuable asset. But when serious money is on the table — whether in an investment round, a business sale, or passing the business to the next generation — the question isn’t just what your brand is worth. It’s whether it can stand up to scrutiny.

💰 IP in Due Diligence

Investors, acquirers, and their lawyers will dig deep. Expect questions like:

  • Does the entity actually own the trade mark registrations?

  • Are they registered — and in the right markets?

  • Are there pending disputes, opposition proceedings, or known copycats?

If the answers aren’t clear, expect your deal timetable (and possibly your deal value) to suffer.

🔗 Assignment and Licensing Clean-Up

A surprising number of brands have messy ownership histories. Fix them now, not during due diligence:

  • Ensure every assignment is documented — especially transfers from founders or prior owners.

  • Identify and resolve any co-ownership or “grey” IP where a contractor or third party may have rights.

  • Review licensing arrangements, particularly where related entities use the brand, to ensure they’re properly authorised.

An untidy chain of title can turn into a deal-breaker.

🧓 Succession Planning

For personal brands and family-run businesses, registered trade marks make succession far smoother. A registered right can be assigned or licensed in a clean, documented transfer — helping preserve not just the name, but the goodwill behind it.

💡 IP Mojo Tip
Your brand won’t retire when you do. If you want it to survive a sale, investment, or handover, protect it like an asset — not a slogan. A clean title today can be worth millions tomorrow.

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Brand Control, Part 9: “From Garage to Global” — Building an International Brand Protection Strategy

Your brand might be born in a garage, a studio, or a co-working hub — but if your business has international ambitions, your trade mark strategy needs to grow up fast.

Exporting? Licensing? Franchising? Operating online with overseas customers? You’ll need more than an Australian trade mark certificate. You’ll need an international brand protection plan.

🌍 Start Local, Think Global

The journey starts at home. To secure international protection, you’ll almost always need to file in your “home” country first. For Australian businesses, that usually means filing with IP Australia before looking abroad.

From there, you have options:

1. The Madrid Protocol
This is the global trade mark filing system administered by WIPO. It lets you extend protection to 130+ member countries through a single application, based on your Australian filing. It’s cost-effective, streamlined, and a good first step into international protection.

2. National Filings
Some jurisdictions don’t play well with the Madrid system. Others may be technically covered by Madrid but are better handled directly due to practical issues or local procedural hurdles. In those cases, it’s worth filing directly through local counsel.

📆 Timing Is Critical

Trade mark rights are territorial — and in some jurisdictions, the “first to file” gets the prize, regardless of who used it first.

Fortunately, the international system gives you a 6-month priority period from the date of your first (Australian) application. If you file overseas within that time, your foreign applications are treated as having the same filing date as your original Australian one.

Miss the window? You risk losing rights to local trade mark squatters — especially in high-risk jurisdictions like China or parts of South America.

✋ Local Sensitivities and Brand Bloopers

Global trade mark strategy isn’t just about paperwork. It’s also about cultural nuance, language, and local business practices.

Brand names that work in English might fall flat — or worse — elsewhere.
The Mitsubishi Pajero famously ran into trouble in Spanish-speaking markets because “pajero” has an unfortunate slang meaning. Even benign names can run into problems if they’re hard to pronounce, culturally insensitive, or already associated with local businesses.

And in China, don’t delay. It’s a strict “first to file” jurisdiction, and trade mark squatting is endemic. If your brand has potential in China, file early — even if you’re not trading there yet.

✅ Practical Tips for Expanding Globally

  • File early: Don’t wait until you enter a market. File when you’re even considering it.

  • Use the Madrid Protocol — but wisely: It’s efficient, but not always the best fit for every country.

  • Check for conflicts: Do clearance searches in each target market to avoid headaches later.

  • Localise carefully: Think about transliteration, local language versions, and regional variants of your mark.

  • Work with local counsel: Especially in high-risk or high-value jurisdictions.

💡 IP Mojo Tip:

Your brand can travel — but it needs a passport.

Registering internationally isn’t just a legal formality. It’s your defence against copycats, squatters, and lost market opportunities.

A global brand strategy doesn’t mean filing everywhere. It means filing smart — in the markets that matter to your business, at the right time, in the right way.

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Café Conundrum: Black Star Pastry’s Trade Mark Trouble

Richards v Black Star Pastry Pty Ltd (No 2) [2025] FedCFamC2G 1226 is a cautionary tale in brand coexistence gone wrong — where parallel growth by two businesses using similar names eventually led to a Federal Circuit and Family Court stoush over coffee, cakes and trade mark rights.

Brewing conflict

Martin Richards and his then-wife started a Brisbane-based social enterprise in 2007 called Blackstar Coffee, roasting beans and selling espresso from carts and cafés. He registered the word mark BLACKSTAR in 2007 and a composite BLACKSTAR COFFEE mark in 2009, covering coffee, coffee beverages and related goods.

Unbeknownst to him at the time, pastry chef Christopher Thé opened a bakery in Newtown, Sydney in 2008 under the name Black Star Pastry — complete with its now-famous strawberry watermelon cake and a reputation that soon spread globally (and virally). Thé registered Black Star Pastry as a business name in 2008 and eventually incorporated Black Star Pastry Pty Ltd (BSP) in 2011.

Though Richards became aware of the Sydney business around 2011 and made contact with Thé, no formal resolution followed. Over the next decade, BSP grew into a multi-store operation in NSW and Victoria, increasingly offering café services and coffee beverages — areas overlapping with Blackstar Coffee’s core trade mark rights.

Trade marks collide

The dispute centred on whether BSP’s use of the phrase BLACK STAR PASTRY — including in logos and retail branding — infringed Richards’ earlier BLACKSTAR marks.

BSP argued that:

  • Its core business was bakery, not coffee;

  • The term Black Star Pastry was distinguishable;

  • Its trade marks had been accepted and registered by IP Australia after amending the specification to exclude “café services” and “specialty coffee retailing”;

  • Any coffee sales were ancillary or covered by its own “bakery services” registrations;

  • Richards had acquiesced by failing to object earlier.

Richards, meanwhile, argued that BSP:

  • Was selling coffee and operating cafés under the Black Star Pastry name;

  • Was using the sign as a trade mark in relation to goods and services covered or closely related to his registrations;

  • Was likely to cause consumer confusion;

  • Couldn’t rely on s 122(1)(e) as a defence because coffee wasn’t squarely within BSP’s registered bakery services;

  • Should not benefit from any perceived delay in enforcement.

The Court’s blend

Judge Manousaridis found in favour of Richards on the infringement claim. The key findings:

  • BSP was using BLACK STAR PASTRY as a trade mark for both coffee and café services.

  • These services were either directly covered by or closely related to the BLACKSTAR registrations.

  • The marks were deceptively similar — particularly given the visual and phonetic similarity, the shared “Black Star” element, and the use in closely related contexts (coffee and cafés).

  • BSP could not rely on its own trade mark registrations as a defence under s 122(1)(e) — because those registrations expressly excluded coffee retailing and café services.

  • Richards’ prior knowledge and phone call with Thé did not amount to acquiescence or delay sufficient to bar relief.

Takeaways: more than just crumbs

This decision serves up some useful reminders:

  • Clearance is key: Registering a business name doesn’t grant trade mark rights — and failing to conduct proper searches can be costly a decade down the line.

  • Expansion needs a check-up: A pivot or expansion into adjacent services (like coffee within a bakery) may breach earlier rights, even if your mark was initially registrable with exclusions.

  • Acquiescence isn’t easily made out: A polite phone call in 2011 won’t shield years of brand growth from an infringement claim — especially when the overlap intensifies over time.

  • Name components matter: While Black Star Pastry and Blackstar Coffee may sound just different enough to lawyers, the average café-goer isn’t parsing the spacing.

In the café world, Black Star may once have stood for two different brands in two different cities — but as the beans (and cakes) spread, the law says one star had to fall.