By Eden Tsiaples, Lawyer and Lisa Egan, Partner

Last year, we wrote about the High Court of Australia’s growing interest in trade mark matters The High Court has now decided each of those cases, and below we outline the key findings in the decision of Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50.  You can read about the background of this case here – https://www.millsoakley.com.au/insights/australian-high-court-takes-interest-in-trade-mark-matters/.

Background Facts

Since at least 1976, Bed Bath ‘N’ Table Pty Ltd (BBNT) has been a retailer of soft homewares such as towels and linen, operating under the “Bed Bath ‘N’ Table” brand, which is the subject of several registered trade marks.

Global Retail Brands Australia Pty Ltd (GRBA) has operated kitchen and cookware stores under the “House” brand since 1978. In 2021, GRBA sought to launch a new line of soft homewares under the name “House Bed & Bath”, using the following logo:

(House B&B Mark).

BBNT alleged that GRBA:

• infringed BBNT’s registered trade marks, which included a mark for the words “BED BATH N’ TABLE” under the Trade Marks Act 1995 (Cth) (TMA);
• contravened the Australian Consumer Law (ACL) by engaging in misleading and deceptive conduct by using the House B&B Mark; and
• engaged in passing off of BBNT’s reputation in its brand.

High Court of Australia decision

The High Court of Australia found:

• GRBA contravened the Australian Consumer Law (ACL) by engaging in misleading and deceptive conduct by using the House B&B Mark; and
• GRBA engaged in passing off of BBNT’s reputation in its brand.

In doing so, the High Court upheld the findings of the primary trial judge, overturning the decision of the Full Federal Court.   In relation to trade mark infringement, this issue was not before the High Court, with both the trial judge and Full Federal Court determining that there was no trade mark infringement.

The High Court upheld the primary judge’s findings that GRBA’s decision to use “House Bed & Bath” was a clear attempt leverage off BBNT’s longstanding reputation in its name, which included the words “bed” and “bath”.

The High Court referred to the following relevant circumstances:[1]

1. BBNT’s reputation in the BBNT mark and branding was distinctive of its soft homewares stores;
2. GRBA’s reputation in its “House” mark and branding for its stores;
3. consumers’ knowledge of over 40 years of use of the distinctive appearances and branding of both BBNT stores and House stores;
4. BBNT’s use of the words “bed” and “bath” in that order, were unique to the exterior of BBNT stores for over 40 years and were not the natural order for reference to those words, meaning that those two words in that order “rolled off the tongue” and were undoubtedly part of the reason that those words appealed to GRBA, which could leverage off that well-known pairing of words in entering a new market for the first time. GRBA was not able to direct the Court to any other traders using the words in that way; and
5. GRBA’s wilful blindness to the risk of confusion when it decided to use the House B&B mark and branding on its soft homewares stores.

The combination of the above factors led to the conclusion that it was likely that reasonable consumers would be caused to wonder whether GRBA (though its use of the House B&B Mark) was somehow associated with, or an extension of, BBNT and its business. Therefore, a finding of misleading and deceptive conduct was made, as well as passing off.

It is noteworthy that, despite BBNT having several registered trade marks for “BED BATH N’ TABLE”, there was no finding of trade mark infringement.  While this issue was not considered by the High Court, both the primary judge and Full Federal Court made a finding that there was no trade mark infringement by use of the House B&B Mark.  This was primarily because the differences between the parties’ respective marks were not considered to be “substantially identical” or “deceptively similar”, which is a requirement for trade mark infringement.  It further reinforces that having a significant reputation in a brand, is not relevant to considerations of trade mark infringement.

Why is this important?

While the full judgment can be read here, we have summarised some of the key takeaways that come as a timely reminder to not only practitioners but also for brands.

Brand Strategy Motivation

This decision is a clear reminder that new or upcoming brands must do their homework on their competitors and the broader market for their industry. It is critical to avoid a situation where (whether directly or indirectly) a brand is leveraging another brand’s reputation and trade marks for their own benefit.

Reputation is an important business asset

Previously the High Court in the Botox case,[2] emphasized that reputation played no role in assessment of infringement of registered trade mark rights, however reputation is central to misleading and deceptive conduct (and passing off) claims.  This has been reinforced by the Bed Bath N’ Table decision[3] in where, despite having registered trade marks, the trade mark owner was not successful on trade mark infringement claims, but was successful on alternative grounds.

Multiple causes of action

While registered trade marks remain an important asset for protection of a business’ brand, where another party is using a similar name or causing confusion in the market, consideration should be given to also raising claims of misleading and deceptive conduct and passing off.

The case highlights the different tests that are applicable to each cause of action.  It is therefore prudent for businesses and practitioners to consider when bringing or defending claims, whether TMA, ACL and passing off at common law should all be enlivened, or which cause of action best suits the factual matrix.

Internal Correspondence

This case has served as a reminder to businesses that additional material, such as work documents and emails, may be discovered in litigation and statements made in internal business documents may be read out in Court.

A key consideration in this case was an email adduced from GRBA’s Head of Brand and Media, which explicitly stated that their new House B&B Mark would have BBNT “running scared”. This email assisted the Court in determining that GRBA was well aware of the reputation of BBNT in the market, and adopted the House B&B Mark with this knowledge.

The case has now been remitted to the primary judge for determination of the relief sought by BBNT and orders for discovery and evidence has been made with a further case management conference listed for June 2027.  There is still therefore some way to go before this matter is finalised!

[1]Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50, [39].

[2] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186

[3] Bed Bath N’ Table v Global Retail Brands Australia Pty Ltd [2025] HCA 50