Applicant Successfully Brown-Noses IP Australia
By Georgia Renard | Associate
What happens when IP Australia changes its mind on a trade mark registration?
In National Cancer Foundation v Registrar of Trade Marks [2025] FCA 711 (30 June 2025), Justice McEvoy explored exactly that issue, considering whether there was a reasonable basis for revoking a trade mark registration under section 84A of the Trade Marks Act 1995 (Cth).
Overview
The National Cancer Foundation (NCF) launched a fundraising campaign adopting the ‘BROWN NOSE DAY’ theme in 2020, with the hopes of raising awareness about bowel cancer. NCF subsequently applied to trade mark ‘BROWN NOSE DAY’ in Class 36 for charitable fundraising services.
Despite owning ostensibly similar trade marks like ‘RED NOSE DAY’ and ‘WHITE NOSE DAY’, charitable healthcare organisation Red Nose Limited (RNL) did not oppose NCF’s trade mark and it proceeded to registration.
However, RNL later requested revocation of the mark under section 84A of the Trade Marks Act 1995 (Cth), arguing that the examiner ought to have raised a section 44 objection (deceptive similarity). IP Australia agreed with RNL and revoked the registration, prompting NCF’s appeal to the Federal Court.
What is Section 84 of the Trade Marks Act 1995 (Cth)?
Section 84A of the Trade Marks Act 1995 (Cth) sets out the conditions under which the Registrar of Trade Marks may revoke a registered trade mark in circumstances where the registration should not have occurred.
Was There an Error?
NCF argued that the original trade mark examiner had accurately assessed the application for “BROWN NOSE DAY” and had considered all relevant prior marks, including the similar marks owned by RNL.
NCF further contended that a later disagreement within IP Australia regarding the original decision to register the trade mark did not mean that the initial decision was flawed.
Justice McEvoy’s Findings
Justice McEvoy agreed with NCF and found no error in the original examination process, noting that the examiner had “considered each of the RND Marks and decided that the Trade Mark was not sufficiently similar to them”.
Colour & Colloquial Meaning Matter
In considering this, Justice McEvoy found that “BROWN NOSE DAY” was not deceptively similar to “RED NOSE DAY” or any other RNL marks.
He also accepted expert evidence that colour is a strong differentiator. Professor Melnyk’s evidence was that “decades of research indicate that colour is a very important consumer differentiator that works both consciously and unconsciously.’”
Put simply, people respond to colours in ways they may not even be aware of. Colours influence how consumers distinguish between brands or campaigns.
In Justice McEvoy’s opinion, the use of the word and colour association of ‘BROWN’ distinguished the “BROWN NOSE DAY” trade mark from the RND Marks, “none of which contain the word BROWN at all.”
The term “brown nose “is also widely understood as a being a euphemism for sycophancy, which is far removed from the clown-related and comedic connotations of “RED NOSE DAY.”
He also rejected the idea that “BROWN NOSE DAY” would be seen as part of a “family” of “NOSE DAY” marks.
Clarifying Section 84A: Not a Second Opinion
Most importantly, Justice McEvoy’s analysis of section 84A of the Trade Marks Act 1995 (Cth) introduces an understanding of what constitutes an “error” sufficient to justify revocation of a trade mark.
He held that revocation based solely on the fact that there was a change of opinion within IP Australia was not sufficient under section 84A.
Section 84A is designed to fix clear administrative errors. There must be a demonstrable flaw in the original decision, something more than just a different interpretation.
He also outlined that this is a question of degree. In other words, how serious or clear the error is will impact the second limb of section 84A.
This case emphasises the importance of the integrity of the examination process.
As Justice McEvoy stated, “I also accept the NCF’s submission that there is a public interest in the integrity of the examination process. Those who have obtained registration should generally be able to proceed with certainty and confidence.”
If you are considering registering a trade mark in Australia or want to further understand the IP process, reach out to us at XVII Degrees.
References
- National Cancer Foundation v Registrar of Trade Marks [2025] FCA 711 https://classic.austlii.edu.au/au/cases/cth/FCA/2025/711.html
Photo by Benjamin Sow on Unsplash
