Background
The National Cancer Foundation (NCF) registered the trade mark “BROWN NOSE DAY” for charitable fundraising services related to bowel cancer. During the initial examination, the Trade Marks Office considered prior marks, including “RED NOSE DAY” (owned by Red Nose Limited for SIDS awareness), but found NCF’s mark to be “sufficiently different” and approved the registration.
Over a year later, following a request from Red Nose Limited, a delegate of the Registrar of Trade Marks initiated proceedings to revoke the registration. The delegate concluded that the original examiner had erred and that “BROWN NOSE DAY” was, in fact, deceptively similar to the “RED NOSE DAY” marks. Accordingly, the delegate revoked the registration pursuant to s 84A of the Trade Marks Act 1995 (Cth), which allows the Registrar to correct administrative errors within 12 months of registration.
NCF successfully appealed the revocation to a single judge of the Federal Court, who restored the trade mark to the register, finding no deceptive similarity. The Registrar of Trade Marks then appealed that decision to the Full Court of the Federal Court.
The Court’s Holding
The Full Court of the Federal Court dismissed the Registrar’s appeal, affirming the decision to keep the “BROWN NOSE DAY” trade mark registered. The court agreed with the primary judge’s ultimate conclusion that NCF’s mark was not deceptively similar to the “RED NOSE DAY” marks. Because there was no deceptive similarity, there had been no error in the original decision to register the mark, and therefore the Registrar’s power to revoke the registration under s 84A was never enlivened.
The court’s finding of no deceptive similarity rested on several key points. First, the word “BROWN” was a strong visual, oral, and conceptual differentiator from “RED”. Second, the marks conveyed entirely different ideas; “BROWN NOSE” has a distinct and widely understood colloquial meaning (sycophancy), whereas “RED NOSE” is associated with clowns and comedy. Finally, the court acknowledged that in the context of charitable fundraising, consumers are accustomed to seeing campaigns named with a formula (e.g., a colour + object + “Day”) and use the distinguishing elements, like colour and concept, to tell them apart.
While the appeal was dismissed, the Full Court did clarify the proper approach to s 84A. It held that the primary judge had erred slightly by suggesting the *degree* of the examiner’s error was relevant to the first part of the test (whether the mark “should not have been registered”). The Full Court clarified that this stage simply requires being satisfied that an error occurred. However, this clarification did not affect the final outcome, as the court found no error had occurred at all.
Key Takeaways
- A trade mark for a charitable campaign that shares a structural similarity with another (e.g., “[Colour] Nose Day”) is not necessarily deceptively similar if its core components are visually and conceptually distinct.
- The distinct colloquial meaning of a phrase (like “brown nose”) is a powerful factor in distinguishing it from another mark, even one with a similar cadence or structure.
- The Registrar’s power to revoke a registration for an administrative error is predicated on an actual error having been made; if a court later finds the original registration was correct, the revocation power is not engaged.
Why It Matters
This decision provides important clarity for charities on the scope of trade mark protection for fundraising campaign names. It indicates that using a common format, such as the “[Object] Day” formula, does not automatically grant the first user a monopoly over that structure. So long as a new mark incorporates sufficiently distinctive elements that create a different overall impression, it may be able to be registered alongside existing marks.
The ruling reaffirms that the test for deceptive similarity is a practical, multi-faceted comparison of the marks in their commercial context. For trade mark owners, it provides a degree of certainty that a validly obtained registration cannot be undone simply because of a subsequent “difference of opinion” within the Trade Marks Office, particularly where a court finds that the original registration was proper and free from error.