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Trade Marks

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Bed Bath ‘N’ Table Not Throwing In the Towel

What happens when your new brand smells a little too much like the towels next door?

If you’re Global Retail Brands Australia (GRBA) — the team behind House and its spinoff House Bed & Bath — you might find yourself embroiled in a multi-front legal fight with long-standing soft homewares heavyweight Bed Bath ‘N’ Table (BBNT). And if you’re BBNT, you might soon be on your way to the High Court of Australia to argue that while a trade mark might not be confusing, a brand strategy can still mislead.

GRBA, long known for “hard homewares” like kitchenware, took a foray into “soft homewares” by launching a new store format under the brand House Bed & Bath. The problem? BBNT had been using Bed Bath ‘N’ Table for over four decades and held multiple trade mark registrations.

BBNT sued under both the Trade Marks Act 1995 and the Australian Consumer Law (ACL), alleging trade mark infringement and misleading and deceptive conduct. While the primary judge in the Federal Court agreed GRBA’s branding was misleading under the ACL (and upheld passing off), they did not find trade mark infringement. The marks weren’t deceptively similar, said the Court — but the Court found  GRBA’s conduct was misleading/deceptive and also constituted passing off.

GRBA appealed, and in a twist befitting a soap opera about linen stores (Doylies of Our Lives? Folded and the Beautiful?), they won. The Full Federal Court overturned the misleading conduct and passing off findings — not because BBNT didn’t have a reputation, but because that reputation didn’t extend far enough to make “Bed & Bath” independently distinctive. The court also pointed to widespread descriptive use of “bed” and “bath” by other retailers and found that GRBA’s actions, while perhaps careless or even opportunistic, didn’t cross the legal line into deception.

BBNT sought special leave to appeal to the High Court. And now the top court in the land will get to decide how much weight to give to brand reputation, wilful blindness, and near-miss branding in Australia’s consumer protection and passing off law.

For trade mark lawyers and marketing advisors, this case is shaping up to be the test of the limits of brand mimicry in retail. Can a well-established business with a household brand name claim monopoly over combinations of common words like “bed” and “bath”? And what level of consumer confusion — or intent to confuse — is enough?

The main takeaways seem to be:

  • Trade mark law and consumer law don’t always walk in lockstep. You can lose one claim and win the other, based on different thresholds and factual assumptions.

  • “Wilful blindness” is not enough by itself. The Federal Court was clear that being strategic (or even a bit cheeky) isn’t the same as being legally deceptive — though the High Court may weigh in differently.

  • Descriptive branding is always a high-risk game. If your mark relies on common category words (like “bed” and “bath”), even 40 years of use might not give you exclusive rights.

  • Appealing to the High Court is rare and consequential. This will be a must-watch for IP lawyers — and one that could reshape how consumer law operates alongside trade mark protection.

Stay tuned for when the High Court beds down the final answer. For now, the towels are fluffed, the pillows are puffed, and the soft homewares sector is on notice.

For the Hitchhiker’s Guide fans, hey, who knows, maybe the HC will make their decision next year on Towel Day?

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A Less than Merry Pair of Perrys

It was Firework vs Fabric in the High Court recently when famous singer Katy Perry (real name Katherine Hudson) battled it out with clothes designer Katie Taylor over Ms Taylor’s registration of the trade mark “Katie Perry”.

It’s taken a while for this fight to get going, though – it all started back in 2008 when Ms Taylor (whose birth name was in fact “Katie Perry”) lodged a trade mark application to protect that name as her proposed clothing label.

By that stage, Katy Perry the singer was well-known but did not have a reputation in Australia in respect of clothing, so Ms Taylor was able to register the mark.

The timeline is interesting:

Timeline: Katie Perry vs Katy Perry

Year Event
September 2008 Katie Taylor lodges the Australian trade mark application for “Katie Perry” (for clothing).
Late 2008 Katy Perry (the singer) becomes internationally famous with her hit songs (“I Kissed a Girl”, etc.), but had not yet started selling clothes or merchandise in Australia under her stage name.
2009–2010 Katy Perry begins launching more merchandise globally (including clothing lines), but after Ms Taylor’s trademark filing date.
2010 Ms Taylor’s “Katie Perry” trade mark is officially registered in Australia.
Early 2010s Katy Perry’s brand and merchandising activity (including clothing sales) expands significantly, including in Australia.
2019 Katy Perry’s companies apply to cancel Ms Taylor’s “Katie Perry” trade mark in Australia (leading to the later court battles).

You can see both sides … Ms Taylor says she is just using her own birth name and not in the entertainment industry, while Ms Hudson (the singer) says Ms Taylor has done the equivalent of a guy named John Pope registering PopeMobile as a trade mark and starting up a car yard in Vatican City.

Unsurprisingly, Ms Hudson tried to knock out Ms Taylor’s “Katie Perry” trade mark. There are various reasons you can do that, and the Roar singer’s reasons included that:

  • The trade mark caused confusion with her own “Katy Perry” trade mark in which she had a real reputation (under s60 of the Trade Marks Act 1995 (TMA))
  • Ms Taylor’s use of her “Katie Perry” mark was likely to cause confusion (under s88(2)(c) of the TMA)

The trial judge in the Federal Court wasn’t having it.  In his view, singer Katy Perry did not have a reputation in Australia for the sale of clothing, there was no real likelihood of confusion occurring, and he exercised his discretion (under s89 of the TMA) not to cancel Ms Taylor’s mark since she has adopted and used it innocently.

The Full Federal Court, though, were on Team Hudson on appeal, reversing the first decision and ordering cancellation of Ms Taylor’s mark because, in their view:

  • Katy Perry’s reputation at the priority date was strong enough (even in name alone) to cause likely confusion (s60 again)
  • Even though she wasn’t yet selling clothes in Australia at the priority date, it was common practice for pop stars to sell clothing and merchandise, so confusion was likely
  • Ms Taylor’s use, even if limited, was likely to cause confusion in the future
  • The trial judge was wrong to use his discretion under s89 because Ms Taylor’s act of applying to register her mark (while knowing of Katy Perry’s fame) contributed to the confusion.

So, off we go to the High Court.  The first hurdle was to get the High Court to grant “special leave” to appeal the Full Court’s decision (you have to ask for that leave because, unlike when you go from a trial judge to a Full Court on appeal, you are not automatically entitled to appeal to the High Court just because you didn’t like the Full Court’s decision).

Ms Taylor’s lawyers argued on the special leave application that the Full Court got it wrong because:

  • The “likely confusion due to reputation” argument (under s60) only applies if the person has a specific reputation in relation to that trade mark for the relevant services, and Katy Perry the singer was not known at that time for her clothing sales – so the Full Court blurred her general fame with the requirement for a trademark-specific reputation
  • The likelihood of confusion at a later date argument (under s88(2)(c)) focused improperly on the singer’s potential future use of her mark (that is, on the basis that one day she might sell clothes) rather than her actual use (which did not originally involve that at all)
  • Filing a trade mark application like Ms Taylor did is not an “act” causing confusion that might prevent the trial Judge from exercising his discretion under s89 to cut Ms Taylor some slack.

The singer’s lawyers got a bit more technical but, essentially, argued that all of the above is really interesting but complete rubbish.

The High Court granted special leave and arguments begin in the High Court in early May … watch this space!