Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50
Phillips Ormonde Fitzpatrick Lawyers has successfully represented long-standing client, Bed Bath ‘N’ Table Pty Ltd (BBNT) in its appeal to the High Court of Australia as part of its long running dispute with Global Retail Brands Australia Pty Ltd (GBRA) following the launch of its House BED & BATH business.
The win is a strong endorsement of BBNT’s brand protection strategy and follows on from earlier legal action taken to maintain its exclusivity including against BED BATH & MORE and the US giant, BED BATH & BEYOND.
The decision will be celebrated by brand owners, particularly those with partially descriptive trade marks and confirms the distinction between actions for trade mark infringement and misleading or deceptive conduct.
Background
BBNT has since 1976, operated one of Australia’s best known specialist retailers of ‘soft’ homewares under the mark BED BATH N’ TABLE. GBRA is a well established homewares retailer and operator of the House retail chain selling primarily ‘hard’ homewares such as kitchenware.
BBNT commenced proceedings in the Federal Court against GBRA in May 2021 following GBRA’s opening of a new soft homewares business under the mark ‘House BED & BATH’, alleging that the use of the House BED & BATH mark infringed its registered trade marks for BED BATH N’ TABLE in contravention of the Trade Marks Act, and constituted misleading or deceptive conduct in contravention of the Australian Consumer Law and the tort of passing off.
On 14 December 2023, Rofe J held at first instance that whilst not infringing the BED BATH N’ TABLE trade marks, the use of House BED & BATH was misleading or deceptive conduct and a passing off.
While the words ‘Bed’ and ‘Bath’ were partially descriptive, Rofe J found BBNT had a strong reputation arising from over 40 years of unique use of the words, in that order, on the exterior signage of its stores and that some consumers would question whether there was some kind of association between the two brands.
Her Honour also applied the principle from Australian Woollen Mills Pty Ltd v F S Walton & Co Ltd that if a mark is chosen for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be ‘fitted for purpose’, and therefore likely to deceive or confuse. Rofe J held that in adopting the words ‘Bed & Bath’, GBRA was wilfully blind as to the possibility of confusion and that this was relevant to whether the conduct was misleading or deceptive. In doing so, Rofe J rejected the evidence from GBRA representatives Mr Lew and Ms McGann attempting to explain GBRA’s adoption of House BED & BATH.
Full Court of the Federal Court
GBRA successfully appealed to the Full Court and on 31 October 2024, Justices Nicolas, Katzmann and Downes unanimously set aside the decision of Rofe J. The Full Court found that Rofe J had erred by not giving effect to the finding that BBNT had no independent reputation in ‘BED BATH’ or ‘BED & BATH’ which was inconsistent with the conclusion that the use of House BED & BATH was likely to lead ordinary and reasonable consumers to believe that the store was associated in some way with BED BATH N’ TABLE.
The Full Court also considered the intentions of Mr Lew and Ms McGann were not useful in determining whether the conduct was misleading or confusing, holding that knowing confusion will occur is not the same as intending for it to occur, particularly where trade names including descriptive words frequently give rise to such confusion.
High Court
BBNT applied for and was granted special leave to appeal to the High Court of Australia and on 10 December 2025, the High Court unanimously upheld Rofe J’s decision at first instance, holding that the reasoning of the Full Court had miscarried.
The High Court considered that the Full Court did not apply the required principles recently set down by the Court in Self-Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd . The decision in Self-Care made clear that while reputation in a mark was a relevant factor in the test for misleading or deceptive conduct pursuant to section 18(1) of the ACL, it is not to be taken into account when considering trade mark infringement under section 120(1) of the Trade Marks Act.
The High Court found that by unduly focusing its analysis on the question of whether the trade marks were deceptively similar, the Full Court had conflated the tests for trade mark infringement and misleading or deceptive conduct. The High Court found that Rofe J had clearly explained the different outcomes by reference to BBNT’s reputation in the BED BATH N’ TABLE mark.
As to the state of mind evidence, the High Court has broadened the application of the principle in Australian Woollen Mills, holding that the evidentiary propositions were not confined to cases of a trader’s use of a competitor’s trade mark or get-up with dishonest intent to mislead consumers.
Their Honours noted that a person’s dishonest intention is not an element of the statutory proscription under s18(1) of the ACL:
“[a] person may be scrupulously honest and yet by conduct contravene s 18(1). But that does not mean a person’s state of mind is irrelevant to the question of contravention. A person’s state of mind may be relevant in the ways described 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.”
Rofe J found that GBRA decided to use part of the BBNT mark with the intention of taking part of BBNT’s trade, with the High Court finding that there was no error in reasoning that the evidentiary approach in Australian Woollen Mills was engaged and supported the inference that Mr Lew’s state of mind was a cogent reflection of reality.
Implications for brand owners
The decision makes it clear that a brand owner can succeed in a reputation-based claim even where it cannot establish statutory trade mark infringement. While they are often conflated, the High Court decision shows the value of separately pleading these different causes of action and ensuring that they are properly addressed in evidence and at trial.
A trader’s intent is important. It is clear in light of the High Court decision that an awareness and an intention to take part of a rival’s trade when adopting a new mark, can support an inference that such conduct is misleading or deceptive.
Finally, for brand owners and particularly those with partially descriptive trade marks, the decision highlights the need for an enforcement or brand protection strategy complementary to a filing strategy. Brand owners seeking to maintain exclusivity need to be vigilant in preventing dilution of their brand. BBNT’s previous actions to maintain its unique use of the words BED and BATH as part of a store name in the market were crucial to its success.