The tables finally turned to success for Bed Bath 'N' Table in the High Court of Australia

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

What you need to know

• On 10 December, the High Court overturned the Full Court of the Federal Court of Australia in the long running consumer protection litigation between Bed Bath 'N' Table and Global Retail Brands Australia (t/as House).
• The High Court reinstated the primary judge's finding that GRBA's use of its "HOUSE BED & BATH" trade mark breached consumer law and amounted to passing off, despite there being no finding of trade mark infringement.
• Brands can protect their reputation through actions for misleading and deceptive conduct and passing off even where trade mark infringement is not available or fails. To establish a successful claim, reputation will be an important consideration alongside the broader market context.
• Knowingly deciding to sail close to the wind when choosing new brands is risky and may lead to a finding that a business was wilfully blind even when no dishonest intention to deceive consumers is established.

What you need to do

• When launching a new brand, conduct appropriate due diligence, including searches to confirm freedom to use and ability to register the brand, covering unregistered uses of competitor brands too.
• Obtain legal advice on the freedom to trade under any new brand, going beyond merely whether the chosen brand is available to register as a trade mark or use as a company or business name.
• Keep evidence of the use of, and reputation acquired under, brand elements, such as examples of marketing, images of retail premises over time and statistics about marketing campaigns.

How did we get here?

This decision marks the end of a long running consumer protection and trade mark dispute between Global Retail Brands Australia Pty Ltd (GRBA) and Bed Bath 'N' Table (BBNT). GRBA owns the kitchenware and hard homeware brand 'House', and in May 2021 launched a new soft homeware store in Melbourne's Westfield Doncaster shopping center under the “HOUSE BED & BATH” trade mark (House Mark). Other stores followed.

BBNT sought to restrain GRBA's use of the House Mark, alleging that it:

• infringed BBNT's trade mark rights in its "BED BATH 'N' TABLE" trade mark (Bed Mark), under section 120(1) of the Trade Marks Act 1995; and
• engaged in misleading or deceptive conduct in breach of section 18 of the Australian Consumer Law (ACL) (Schedule 2 of the Competition and Consumer Act 2010 (Cth)) and committed the tort of passing off, based on an allegation that consumers would perceive an association between House B&B and BBNT.

The BBNT's success in respect of each of these claims is summarized in the table below:

High Court overturns Full Court's decision

In April of this year, the High Court granted BBNT special leave to appeal the Full Court's decision in relation to the ACL and passing off issues. BBNT's appeal was successful, with the High Court deciding that the primary judge made no error in finding that GRBA engaged in misleading and deceptive conduct (or conduct likely to mislead or deceive) in contravention of section 18 of the ACL and had also committed passing off, despite not infringing BBNT's trade mark rights.

The unanimous High Court decision found that the Full Court's reasoning miscarried in two key aspects:

• the role of, and extent to which, reputation in a composite mark is relevant to a claim for passing off or contravention of the ACL vis-à-vis assessing infringement of a competing, non-identical mark; and
• in what circumstances the "fitted for the purpose test" should apply when assessing a claim for misappropriation of goodwill by passing off and statutory misleading and deceptive conduct under the ACL.

The trade mark claim was not considered by the High Court on appeal, with all Courts accepting that consumers would not consider GRBA's House Mark "deceptively similar" to BBNT's Bed Mark.

See our previous article here for further discussion of the primary judge and Full Court's findings in this matter.

Reputation is relevant to ACL claims regarding trade mark usage

The Full Court considered the primary judge erred in concluding that GRBA's conduct was likely to mislead or deceive consumers and amounted to passing off because it failed to give effect to the primary judge's own finding that BBNT had no independent reputation in the words "BED BATH" or "BED & BATH".

On appeal, the High Court was persuaded that GRBA's conduct in using the House Mark constituted misleading and deceptive conduct (or conduct likely to mislead or deceive), despite the differences between the House Mark and Bed Mark. In disagreeing with the Full Court's reasoning, the High Court emphasised two key principles:

• the consumer and trade mark law inquiries are separate and they should not be conflated; and
• while reputation is not relevant to the trade mark infringement inquiry under section 120(1) of the Trade Marks Act, BBNT's reputation was a determinative factor in the consideration of the ACL claim and passing off, which is concerned with the conduct in a broader context.

Crucially, a finding that GRBA's use of the mark was misleading or deceptive was not dependent on a finding that the marks were deceptively similar. The High Court emphasised that trade mark infringement and misleading conduct involve different inquiries and must be treated separately. By placing undue emphasis on the trade mark question at the expense of several additional factors beyond the similarity of the marks alone, the Full Court erroneously conflated the inquiries.

To successfully argue that a rival brand's use of a mark is likely to mislead or deceive consumers such that they would assume an association between the brands, parties cannot rely on a "decontextualised analysis of the marks alone" and instead must draw out objective assessments of the rival brand's conduct in its immediate and broader market context, including factors such as each brand's reputation, consumer knowledge, and any “wilful blindness”. In other words, the consumer law inquiry does not end at a simple side-by-side or imperfectly recollected comparison of the marks alone.

The High Court previously determined the question of whether weight should be given to reputation when assessing trade mark infringement in Self-Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186. The BBNT appeal determines the same question in relation to consumer law, with the High Court affirming the importance of reputation in claims of misleading and deceptive conduct and passing off.

The High Court reiterated the primary judge's findings that GRBA's choice of the brand "House Bed & Bath" over alternative wording was an attempt to leverage off BBNT's longstanding reputation in its name, which included the words "bed" and "bath" in that order. No other trader had used this form of words in its store name or external signage, giving BBNT over 40 years' of unique use. This, paired with the similarity in get-up of the stores, led to the conclusion that reasonable consumers would be caused to wonder whether there was an association between GRBA's House Bed & Bath business and BBNT, perhaps wondering whether the businesses had merged or that GRBA had taken over BBNT.

While deceptive similarity for trade mark infringement is assessed by imperfect consumer impression and recollection of the marks without regard to any broader reputation, consideration of reputation is relevant in consumer law claims, and in this case, was the reason for the difference in result between BBNT's claims.

Clarifying the role of intention

Another matter the High Court considered on appeal was whether drawing an inference of willful blindness (in the absence of any positive finding of intention to mislead) constitutes "reliable and expert opinion on the objective question" in relation to a finding of misleading or deceptive conduct, based on the "fitted for the purpose" test.

The "fitted for the purpose" test was first articulated by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at [657], that:

"… if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse…[i]n a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive."

The High Court found no error in the primary judge's conclusion that GRBA "certainly intended to take part of BBNT's trade and decided to use part of its mark, together with the store 'get-up', intending to achieve the object of taking part of BBNT's trade". In reaching this conclusion, the High Court confirmed that “wilful blindness” can be relevant under the evidentiary approach in Australian Woollen Mills to the objective question without requiring proof of dishonest intent noting "a person's state of mind, directly or by analogy, may engage the approach to evidence explained in Australian Woollen Mills. The infinite spectrum of a person's state of mind from dishonest intent to scrupulous honesty are all within the scope of that reasoning."

Where to from here?

BBNT successfully established that the Full Court had impermissibly conflated the distinct legal inquiries under the Trade Marks Act and the ACL, and the primary judge’s contextual analysis - centering on BBNT’s long-standing reputation, market context, and GRBA’s “wilful blindness” - contained no legal error justifying appellate intervention. The High Court's decision demonstrates the use of a trade mark as the name of a store and when used on the exterior of stores and otherwise, can constitute misleading or deceptive conduct, even if the trade mark is substantially and crucially different to another registered mark.

The orders of the Full Court were set aside and the primary judge’s orders were reinstated to permanently restrain GRBA from using its House Mark or any trade mark substantially identical or similar to the House Mark, in respect of soft homeware goods or the retailing of such goods. GRBA has two months to cease all use of the brands and must pay most of the trial costs of BBNT on an indemnity basis. The High Court also remitted the matter to the Federal Court for determination of the remaining issues, including any claim for pecuniary relief by BBNT, and ordered that GRBA pay BBNT's costs in the appeal.

This is the first decision handed down by the High Court in respect of the three applications for special leave granted this year in trade mark cases. Judgment has been reserved in Taylor v. Killer Queen LLC & Ors (S49/2025) (the Katy Perry case), and the parties have just finished filing pleadings in Zip Co Limited & Anor v. Firstmac Limited (S140/2025), so 2026 is already shaping up to be another busy year for IP lawyers grappling with the High Court's interpretation of trade mark law.

Authors: Kellech Smith, Partner; Daele Tyler, Senior Associate; Sarah Phillips, Lawyer; Alysha Yacono, Graduate; Annika Barrett, Senior Expertise Lawyer.

Want to know more? 

• Will the tables turn for Bed Bath 'N' Table? (17 April 2025) 
  Our earlier publication which reflects on the findings of the primary judge and Full Court in anticipation of the High Court hearing