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The High Court of Australia has allowed Bed Bath 'N' Table Pty Ltd's (BBNT) appeal from the decision of the Full Federal Court in its case against Global Retail Brands Australia Pty Ltd (GRBA).1
The key takeaway for businesses is that a finding against trade mark infringement does not prevent liability under the Australian Consumer Law (ACL).
Background
This case concerned GRBA's use of its HOUSE BED & BATH
mark, including in the following stylisation, in relation to soft
homewares:
At trial, Rofe J found that the HOUSE Mark was not substantially identical with or deceptively similar to BBNT's trade mark registrations for BED BATH 'N' TABLE (BBNT Marks), but its use nonetheless constituted misleading or deceptive conduct in contravention of section 18(1) of the ACL and the tort of passing off.2
The Full Federal Court partially overturned this decision. While Nicholas, Katzmann and Downes JJ agreed with Rofe J that GRBA had not infringed the BBNT Marks, their Honours found that GRBA's use of the HOUSE Mark did not breach the ACL or amount to passing off.3
Reputation is Key
The HCA held that BBNT's reputation in the BBNT Marks
explained, in part, the differing findings on trade mark
infringement (which Rofe J rejected) and misleading or deceptive
conduct (which Rofe J accepted).4
The scope of the ACL inquiry was much broader, with Rofe J considering several additional factors, such as:5
- GRBA's reputation in its standalone HOUSE mark and branding;
- Consumers' knowledge of the distinctive appearances of the BBNT and GRBA stores; and
- The specific ordering of "bed" and "bath", which was unique to the exteriors of BBNT stores for over 40 years.
Willful Blindness
The HCA also considered GRBA's willful blindness in
adopting the HOUSE Mark despite its awareness of BBNT's
reputation in the soft homewares industry.
The HCA found at [33]:
GRBA, having knowledge of the soft homewares market, borrowed the BBNT get-up, meaning that an inference can and should be drawn that GRBA believed "that there will be a market benefit in so doing" and believed "that such borrowing was 'fitted for the purpose and therefore likely to deceive or confuse'" [...]
The HCA also found that even though wilful blindness did not amount to an intention to deceive, it does provide an "expert opinion" on the question of whether GRBA's conduct is likely to deceive.
The HCA upheld Rofe J's decision that, despite "substantial and crucial differences" between the marks,6 GRBA's use of the HOUSE Mark for its soft homewares stores constituted misleading or deceptive conduct. Importantly, the scope and functions of the Trade Marks Act 1996 (Cth) differ from those of the ACL; as such, trade mark infringement and misleading or deceptive conduct must be treated as distinct legal inquiries.7
Footnotes
1 Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50 (HCA Judgment), allowing the appeal from Global Retail Brands Australia Pty Ltd v Bed Bath 'N' Table Pty Ltd [2024] FCAFC 139 (FCAFC Judgment).
2 Bed Bath N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd (2023) 182 IPR 393 at 458 [415].
3 See FCAFC Judgment at [64]-[89].
4 >HCA Judgment at [38]-[39], citing FCAFC at [75].
5 Ibid at [41].
6 Ibid at [48]-[57].
7 Ibid at [40].
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
