By McCullough Robertson Lawyers
A recent trade mark case in the Full Federal Court has highlighted the need for businesses to exercise caution when using descriptive words as part of a brand name.
While the court ruled the name “House Bed and Bath” did not infringe the trade mark of another well-known brand, the case reinforces the need to seek early advice.
This is particularly the case when expanding into different service offerings or selecting a new brand name that includes “descriptive” words.
On October 31, 2024, the Full Federal Court (FFC) unanimously ruled the trade mark “House Bed & Bath” did not infringe the prior registered “Bed Bath N’ Table” trade mark, and that use of “House Bed & Bath” was not misleading or deceptive.
Bed Bath N’ Table Pty Ltd (BBNT) has operated stores under the trade mark “Bed Bath N’ Table” in Australia since 1976, selling “soft homewares”, for example, bath towels, bed linen, cushions and throws.
Global Retail Brands Australia Pty Ltd (GRBA) has operated “House” retail stores in Australia since 1978, primarily selling kitchenware and hard homewares such as plates, cutlery, pots and pans. Both “Bed Bath N’ Table” and “House” peacefully co-existed in the market for many years.
However, in May 2021 GBRA began operating a new soft homeware store under the trade mark “House Bed and Bath”.
BBNT was concerned about GRBA’s use of the trade mark “House Bed & Bath” and instituted proceedings against GRBA for trade mark infringement, misleading and deceptive conduct under the Australian Consumer Law, and passing off.
At first instance, the primary judge found that while there was no trade mark infringement by GRBA, the use of the “House Bed & Bath” mark was misleading and deceptive and GRBA had also engaged in passing off. As a result, the judge restrained GRBA from selling or advertising soft homewares under the “House Bed and Bath” trade mark.
GRBA appealed this decision, and BBNT cross-appealed the primary judge’s finding that there was no trade mark infringement.
The decision
On 31 October 2024, the FFC ruled that:
- GRBA did not engage in misleading and deceptive conduct or passing off by using the trade mark “House Bed & Bath”; and
- The “House Bed & Bath” trade mark did not infringe the “Bed Bath N’ Table” trade marks.
In considering misleading and deceptive conduct, the FFC considered (amongst other factors) whether “Bed Bath ‘N’ Table” had any independent reputation in the words “Bed” and “Bath”, whether consumers would associate the brands, and evidence of GRBA’s intentions. The FFC found that:
- Consumers generally referred to “Bed Bath N’ Table” as a whole and did not shorten the brand to “Bed & Bath” for example, and so BBNT had no independent reputation in the words “Bed” and “Bath”;
- The difference between the two marks would be ‘substantial and obvious’ to anyone but ‘the most careless observer’. Therefore consumers would not associate the brands and would merely infer that both sold soft homewares for bedrooms and bathrooms, not that they were the same or related entities; and
- GRBA did not have a commercially dishonest intention to appropriate part of BBNT’s mark or reputation. While the primary judge found GRBA was ‘wilfully blind’ to the prospect of confusion, wilful blindness in this instance was insufficient to establish intention.
In terms of the infringement cross-claim, the FFC held that “House Bed & Bath”, as a composite trade mark, did not infringe the “Bed Bath N’ Table” registered trade marks, because “House” was the predominant element in the GRBA mark, and “Bed and Bath” did not operate as a separate badge of origin independently of the “House Bed & Bath” mark.
Therefore, there was no real, tangible danger that customers would believe or wonder whether the goods were from the same source or otherwise associated.
The FFC therefore allowed GRBA’s appeal, set aside the injunction, and dismissed the trade mark cross-claim.
The following McR lawyers contributed to this article: Belinda Breakspear (Partner), Alex Hutchens (Partner), Melissa Miller (Partner), Sophia Christou (Senior Associate) and Olivia Lambert (Lawyer)
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This article covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. It is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.
