No Sniff of Confusion: BROWN NOSE DAY Remains Registered

Sam Merrylees

Senior AssociateAitken PartnersView Profile

Kara Inglese

LawyerAitken PartnersView Profile

In a decision that will be welcomed by trade mark owners, the Full Federal Court has reaffirmed the limited circumstances in which the Registrar of Trade Marks can revoke a registered trade mark, finding that BROWN NOSE DAY should remain registered.

Background

In Registrar of Trade Marks v National Cancer Foundation Limited [2026] FCAFC 95, the Full Court of the Federal Court considered the Registrar’s rarely used power under section 84A of the Trade Marks Act 1995 (Cth) to revoke a trade mark registration within 12 months of registration.

Section 84A allows the Registrar to revoke a registration where they are satisfied that the trade mark should not have been registered and that, in all the circumstances, it is reasonable to revoke the registration. Both of those requirements are to be assessed against all the relevant circumstances.

The dispute concerned the trade mark BROWN NOSE DAY, which was registered by the National Cancer Foundation (NCF) for charitable fundraising services associated with bowel cancer awareness campaigns. Following registration, Red Nose Limited asked the Registrar to revoke the registration, alleging that it was deceptively similar to its existing NOSE DAY series of trade marks (including RED NOSE DAY and other marks involving the name of a colour plus “NOSE DAY”, namely black, blue, yellow and green nose days).

The Registrar subsequently exercised the section 84A power and revoked the registration. The NCF successfully appealed that decision to the Federal Court at first instance, and the Registrar then appealed to the Full Court.

The Full Court’s Decision

The Full Court dismissed the Registrar’s appeal and confirmed that BROWN NOSE DAY should remain registered.

In doing so, the Court provided important guidance on the operation of section 84A. While the Court found that the primary judge had erred in aspects of the approach taken to assessing whether the Registrar could be “satisfied” that the trade mark should not have been registered, those errors were ultimately not material to the outcome.

Critically, the Full Court agreed that BROWN NOSE DAY was not deceptively similar to the earlier RED NOSE DAY trade marks. As a result, there was no underlying registration error and no basis for concluding that the mark should not have been registered in the first place. Without satisfying that threshold requirement, the Registrar’s revocation power was not enlivened.

Implications for Trade Mark Owners

This decision confirms that the Registrar’s power to revoke a registered trade mark is intended to be exercised only in limited circumstances and is not a substitute for a formal opposition.

Key lessons for trade mark owners and applicants include:

• Registration provides meaningful certainty: once a trade mark is registered, it will not easily be removed through the Registrar’s administrative revocation powers.

• Opposition remains the primary avenue for challenging trade marks: businesses concerned about a pending application should monitor and oppose applications where appropriate rather than relying on post-registration remedies.
• Deceptive similarity remains a nuanced assessment: even where marks share common elements, the Court will consider the overall impression created by the marks and the likelihood of consumer confusion.

Early clearance searches remain important: Although the NCF ultimately succeeded, the dispute demonstrates the costs and uncertainty that can arise when similar marks co-exist in the market.

Key Takeaway

The decision reinforces that section 84A is an exceptional corrective power, not a second opportunity to oppose a registered trade mark. For trade mark owners, the case provides comfort that registered trade marks enjoy a significant degree of certainty, while also highlighting the importance of conducting clearance searches and addressing potential conflicts before registration.

If you require assistance with trade mark protection, registration, enforcement or disputes, our intellectual property team can help. We advise businesses on all aspects of trade mark strategy and brand protection. Contact us to discuss your brand and the options available.