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The Art of Disclaimers: Jacksons v Jackson’s Art Supplies (No 2)

When two businesses with nearly identical names lock horns, things usually come down to trade marks, passing off, and reputation.  But in Jacksons Drawing Supplies Pty Ltd v Jackson’s Art Supplies Ltd (No 2) [2025] FCA 1127, the real fight was over disclaimers, pop-ups, sticky banners, and user attention spans.

Yes, really. Welcome to the future of injunctive relief.

The Backdrop: Two Jacksons, One Internet

  • Jacksons Drawing Supplies (JDS) is the long-standing Australian art supply brand.

  • Jackson’s Art Supplies (JAS) is a UK giant with a strong online presence.

When JAS launched its Australia-specific subdomain (jacksonsart.com/en-au), it didn’t just sell paints and brushes — it displayed Australian flags, quoted in AUD, listed an Adelaide warehouse, and even had an Aussie phone number. To many customers, it looked like the local Jacksons.

The Court (in an earlier decision) held that this conduct contravened s 18 and s 29 of the ACL and amounted to passing off.

Round Two: The Relief Hearing

The question was: what form should the non-pecuniary relief take?

JDS wanted a sticky header disclaimer on every page (always visible). JAS wanted a one-off pop-up disclaimer (dismiss it once and never see it again).

The Federal Court, armed with expert evidence on digital attention, split the difference.

Attention Science Hits the Federal Court

This case is remarkable for its reliance on attention science experts:

  • Michael Simonetti (website developer & SEO expert)
    Warned about “banner blindness”: users ignore sticky headers and disclaimers that look like ads.

  • Dr Karen Nelson-Field (global expert on omnichannel attention science)
    Explained that pop-ups trigger active attention because they interrupt the browsing experience. Sticky headers, by contrast, fade into the background.

  • Professor Mingming Cheng (digital marketing & SEO)
    Highlighted that hyperlinking to JDS’s site could affect search engine algorithms and reinforce associations between the two brands.

The Court accepted that no disclaimer format guarantees it will be read, but opted for the solution most likely to cut through.

The Court’s Orders

Justice Jackson ordered that JAS can’t operate its Australia-specific site (or any site with Australian characteristics) unless it shows a disclaimer:

“Please note: this website is not affiliated with the Australian company Jacksons Drawing Supplies Pty Ltd or its website jacksons.com.au.”

The disclaimer must:

  • Pop up every time a user starts a new browser session, blocking the site until acknowledged.

  • Also appear at the bottom of each page (non-sticky, same size as body text).

  • Be clear, prominent, and legible.

  • Not include any hyperlink to JDS’s site (too much risk of SEO crossover and confusion).

No requirement for phone sales, social media, or ads — because the misrepresentation arose via the website itself.

No Sticky Business

JDS’s sticky header idea was rejected as:

  • Too intrusive, especially on mobile devices.

  • Likely to be ignored due to banner blindness.

  • Damaging to user experience with little benefit.

Pop-ups, despite being annoying, were judged the least-worst option.

Costs: Calderbank Offers Bite Back

The Court also tackled costs.

  • JDS was successful overall, but lost against the third and fourth respondents.

  • JAS had made Calderbank offers (including restricting sales into JDS’s “core markets” and paying a small sum).

  • The Court held JDS was not unreasonable to reject them — the offers didn’t resolve the cross-claim, lacked mutuality, and wouldn’t necessarily prevent consumer confusion.

The result?

  • JDS gets costs against the first and second respondents (with a 15% discount).

  • The third and fourth respondents get indemnity costs from a certain date.

Why This Case Matters

This decision is a practical playbook for how courts may deal with online misrepresentation and passing off in 2025 and beyond:

  1. Disclaimers must do more than exist — they must grab attention. Passive banners won’t cut it.

  2. User experience is relevant — remedies must be proportionate and fair, not ruin the site.

  3. Hyperlinks aren’t a free fix — they can create new risks of association in both consumers’ minds and search engine algorithms.

  4. Attention science is evidence — expert testimony on human behaviour online now shapes equitable relief.

  5. Calderbank strategy remains vital — but offers must be clear, mutual, and genuinely address the issues at stake.

Takeaways for Brand Owners

  • Global websites need local strategy. If you’re running an AU subdomain, check your disclaimers and branding.

  • Disclaimers aren’t window dressing. Courts will look at how they’re delivered, not just what they say.

  • Attention matters. Evidence from digital marketing and psychology can sway the outcome.

  • Settlement strategy is as important as trial strategy. Get your Calderbank offers right.

Bottom line: The Federal Court has signalled that in the age of pop-ups, banner blindness, and Google algorithms, effective remedies must be technologically and behaviourally savvy. For IP lawyers and brand managers, Jacksons v Jackson’s is a reminder that protecting reputation online requires more than just words — it requires understanding how consumers really pay attention.

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You Can’t Corner “Better”: TRADIE BEER BUILT BETTER Survives Opposition

If your brand is built on praise, don’t be surprised when you can’t block others from using it.

That’s the message from a recent Trade Marks Office decision where Better Beer Holdings tried — and failed — to stop TRADIE BEER BUILT BETTER from registering.

The Players

  • Better Beer Holdings Pty Ltd – behind the BETTER BEER brand, co-founded by Nick Cogger and comedy duo The Inspired Unemployed (with a strong “tradie vibe” in its marketing).

  • TRADIE Holdings Pty Ltd – owner of the TRADIE brand, here applying for TRADIE BEER BUILT BETTER for beers and related beverages.

The Opposition

Better Beer ran three grounds:

  1. s 44 – Deceptively similar to their BETTER BEER marks.

  2. s 60 – Reputation in BETTER BEER would make confusion likely.

  3. s 42(b) – Use would be contrary to law (misleading under the ACL).

Why the Case Failed

1. Section 44 – Not deceptively similar

  • Both marks share “beer” and “better” but have different overall impressions.

  • TRADIE is a prominent lead element; “beer built better” flips the word order and creates its own alliteration.

  • “Better beer” is a laudatory/descriptive phrase — unlikely to be monopolised.

  • No “real tangible danger” of confusion when compared as wholes.

2. Section 60 – Reputation not enough

  • Sales and promotion were significant, but much use was with the ribbon device or in get-up, not the plain words alone.

  • Even assuming reputation in BETTER BEER, it lacked the “communicative freight” to make TRADIE BEER BUILT BETTER risky.

  • The “tradie” theme in marketing wasn’t unique enough to bridge the gap — plenty of beer is pitched to tradies.

3. Section 42(b) – ACL claims collapse

  • Once confusion wasn’t made out under s 60, misleading/deceptive conduct couldn’t be made out either.

Decision

  • All grounds failed — TRADIE BEER BUILT BETTER proceeds to registration.

  • Costs awarded against Better Beer.

IP Mojo Takeaways

  1. Descriptive marks are weak weapons – “Better Beer” is the kind of praise any brewer might use. Even with strong sales, it’s hard to exclude others.

  2. Whole-of-mark comparison matters – Prominent extra elements (like “TRADIE”) and re-ordered slogans can be enough to avoid deception.

  3. Reputation needs distinctiveness – It’s the mark’s pull as a badge of origin that counts, not just marketing volume.

  4. Costs risk is real – Lose on all grounds, and you’re paying the other side’s costs.

Citation: Better Beer Holdings Pty Ltd v TRADIE Holdings Pty Ltd [2025] ATMO 147

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Menus Won’t Save You: Merivale’s “est” Loses Class 16 in Non-Use Battle

When your brand is famous in one field, can it keep rights in goods you barely touch?

Merivale’s long-closed Sydney fine-dining institution est recently learned the hard way that incidental printed materials — like menus or event stationery — won’t necessarily save a trade mark registration for “printed matter” in Class 16.

The Players

  • Hemmes Trading Pty Ltd (Merivale) – Owner of the est restaurant brand since 2000.

  • Est Living Pty Ltd – A design publisher with an online magazine “Est” since 2011.

Est Living applied under s 92(4)(b) of the Trade Marks Act 1995 (Cth) to partially remove Merivale’s est registration for non-use in Class 16 (paper goods, printed matter, photographs, stationery).

The Evidence Game

Merivale’s “use” case relied on:

  • Wedding/event menus branded est

  • Mentions of est in Merivale’s “Weddings” book and on social media

  • Contracts and invitations naming est as a venue

  • An argument that menus were “goods in the course of trade” like in the Realtor decision

The problem?

The Delegate found:

  • Menus and invitations were ancillary to restaurant services — not sold or traded as Class 16 goods.

  • Branding on venue/event collateral was dominated by “Merivale”, with est appearing only as a location reference.

  • No convincing evidence of est-branded printed goods in the Relevant Period that actually functioned as a trade mark for Class 16 goods.

The “COVID Obstacle” Argument

Merivale claimed pandemic lockdowns were an “obstacle to use” under s 100(3)(c). The Delegate wasn’t persuaded:

  • The restaurant closed for renovations before COVID.

  • Private events still ran during the period, so use was possible.

  • Delay in reopening wasn’t justified by pandemic impacts alone.

Discretion? Declined.

The Registrar’s discretion under s 101(3) is a safety valve, but it’s not there to protect unused marks for sentimental reasons. Public interest tipped the scales:

  • est had a dining reputation, but not for Class 16 goods.

  • Keeping unused goods on the Register would “clog” the system and create unnecessary hazards for other traders.

The Result

Partial removal succeeded. The est registration now covers only:

Class 32: Beers, mineral and aerated waters, non-alcoholic drinks, fruit drinks/juices, syrups, and preparations for making beverages.

Costs were awarded against Merivale.

IP Mojo Takeaways

  1. Goods vs Services – Use for services doesn’t automatically translate to use for goods, even if the goods are part of the service experience.

  2. Menus ≠ Market Goods – If they’re free, incidental, and tied to the service, they probably won’t save your Class 16 claim.

  3. Obstacle Defence Is Narrow – COVID didn’t help here because the closure predated it and events continued.

  4. Discretion Won’t Fill the Gaps – If you can’t prove use or genuine intent, public interest will clear the Register.

Citation: Est Living Pty Ltd v Hemmes Trading Pty Ltd [2025] ATMO 142

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What happens when your new brand smells a little too much like the towels next door? (High Court Edition)

The linen wars have gone all the way to the top.

Earlier this year, we wrote about Global Retail Brands Australia (GRBA) — the team behind House and its spin-off House Bed & Bath — squaring off against soft-homewares stalwart Bed Bath ‘N’ Table (BBNT). The Federal Court split the baby: no trade mark infringement (the marks weren’t deceptively similar), but misleading conduct and passing off were found at first instance. The Full Federal Court overturned those latter findings, giving GRBA a win.

Now, the High Court has heard the appeal, reserved its decision, and the case is poised to reshape the way Australian law balances trade mark rights, reputation, and consumer protection.

The clash of frameworks: trade mark vs consumer law

At the heart of the battle is the distinction sharpened by the High Court in Self Care v Allergan (2023).

  • Trade mark infringement under the Trade Marks Act 1995 (Cth) is an artificial “mark-on-mark” comparison, stripped of reputation, history, and context.

  • Misleading and deceptive conduct under the ACL (and passing off) is broader, taking in the real-world reputation of the trader, the marketplace, and consumer impressions.

BBNT argues the Full Federal Court collapsed the distinction by effectively treating the failure on the trade mark claim as the “starting point” for rejecting the ACL/passing off claims. In its view, that’s a methodological error: reputation and consumer context should drive the ACL analysis.

GRBA counters that there were “substantial and crucial differences” between House Bed & Bath and Bed Bath ‘N’ Table, and — critically — that BBNT had no independent reputation in Bed & Bath alone. Any risk of confusion, they say, was theoretical at best.

Inside the High Court hearing

The transcript gives a flavour of the tension. Counsel for BBNT pressed that the proper inquiry under the ACL was not whether the marks looked deceptively similar in the abstract, but what meaning a reasonable consumer would take in light of BBNT’s 40 years of unique use of Bed Bath ‘N’ Table in the soft-homewares market. Add GRBA’s adoption of a Hamptons-style fit-out, similar typography, and the deliberate choice of “Bed & Bath” over alternatives like House Bath & Bed or House Bedworks, and the picture (they say) becomes clear.

GRBA, in response, stressed that “House” dominates their brand and that consumers couldn’t miss it “save through exceptional carelessness or stupidity” (yes, that’s the phrase from the Full Court). They emphasised that BBNT’s reputation rested in the whole composite mark — Bed Bath ‘N’ Table — not the sliced-off “Bed & Bath” segment.

The bigger questions

The case raises issues far beyond duvets and towels:

  1. Can reputation in a composite mark give effective monopoly over common category words? BBNT says yes, at least where decades of unique use have entrenched association. GRBA says no — descriptive words like “bed” and “bath” can’t be locked up, even after 40 years.

  2. Does “wilful blindness” matter? The primary judge thought GRBA’s conduct (and evidence of strategic borrowing) was “fitted for the purpose” of diverting trade. The Full Court disagreed, saying sharp elbows in commerce don’t necessarily equal deception.

  3. Where do trade mark law and the ACL intersect? The High Court is being asked to clarify whether a finding of no trade mark infringement makes it harder — or irrelevant — to succeed under consumer law.

Why it matters

For retailers and brand advisors, this case could reset the boundaries between:

  • Protectable brand equity and the freedom to use descriptive terms;

  • Strategic mimicry and unlawful deception;

  • The narrow lens of statutory trade mark rights and the broader sweep of consumer expectations.

If the High Court restores the primary judge’s finding for BBNT, it could embolden established brands to take action even where marks aren’t deceptively similar, so long as the marketplace context points to deception. If it affirms the Full Court, it will signal that descriptive terms are fair game, and that reputation in a composite mark doesn’t easily fracture into enforceable monopolies over its parts.

Final thoughts

The towels are still fluffed, the pillows puffed, and the decision is pending.

Whichever way the High Court turns, this case will be cited in branding disputes for years. It’s a live stress test of how Australia draws the line between brand mimicry and market misconduct.

And for those keeping track of timing, yes — the Court has reserved. Whether judgment arrives by Towel Day next year remains to be seen.

👉 We’ll update when the High Court finally beds down its answer. Until then, trade mark lawyers and brand managers should keep one eye on Doncaster and Chadstone… and the other on the High Court bench.

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No Proof, No Profit: The Perils of Chasing an Account in Trade Mark Cases

When you win a trade mark infringement case, the natural instinct is to go after the other side’s profits. After all, why should the infringer keep any benefit from piggybacking off your brand? But as Kretchmer Enterprises Pty Limited v AMR Manufacturing Pty Limited [2025] FedCFamC2G 1394 shows, that’s often easier said than done.

Background: “All Lift” confusion

Kretchmer Enterprises (KEPL) trades as All Lift Forklifts, with a suite of registered marks in Class 37 and others. Its competitor, AMR Manufacturing (run by director Michael La Greca), began using All Lift Material Handling and Construction and related names.

Liability was not in issue. The respondents consented to declarations of infringement and permanent injunctions. That left the big question: what remedy? KEPL pushed for an account of profits, seeking to strip out AMR’s gains from the infringing conduct.

The problem with profits

On paper, an account of profits sounds straightforward: the infringer must disgorge what they wrongfully earned from misusing the mark. In practice, it’s fraught.

Here, KEPL argued that “Sundry GST-Free Payments” appearing in AMR’s cashflow documents (produced under a notice to produce) represented profits. KEPL’s calculation put those figures at around $137,000.

Judge Manousaridis wasn’t convinced. Three strikes sank the claim:

  1. Implausible categorisation: The “Sundry GST-Free Payments” were more likely linked to equipment purchases or financing, not net profits.

  2. Failure to attribute: KEPL treated all of AMR’s income as if it was attributable to the “All Lift” brand, rather than identifying which sales were actually driven by the infringing use.

  3. Notice timing: There was no evidence AMR knew of KEPL’s marks before 30 October 2023. Any account could only run from that date — further cutting back the claim.

The director angle

KEPL also tried to rope in Mr La Greca personally, arguing he was jointly and severally liable for any profits. The Court flatly rejected this. Since no such declaration had been pleaded, and liability was admitted only in AMR’s corporate capacity, there was no personal exposure.

The takeaway

This case is a reminder that:

  • Evidence is everything. If you’re seeking an account of profits, you need invoices, ledgers, and clear links between infringing sales and the trade mark. Broad-brush assumptions won’t cut it.

  • Attribution matters. Not every dollar earned by an infringer is profit from the brand misuse. The court will only strip out the gain attributable to the wrongful use of the mark.

  • Timing counts. Accounts run only from when the infringer knew (or was put on notice) of the rights.

  • Directors aren’t automatically liable. Unless properly pleaded, personal exposure is off the table.

Final word

The sting in the tail for KEPL: despite a clean win on infringement, its claim for profits was dismissed entirely.

The lesson for brand owners and their lawyers? Sometimes it’s smarter to seek damages — or statutory additional damages under s 126(2) — rather than chasing an elusive account.

In trade mark litigation, victory on liability doesn’t always translate to money in the bank. As this case shows: no proof, no profit.

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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.