High Court rules on why context matters: misleading conduct vs trade mark infringement

In 2025 the High Court was unusually busy with trade mark cases, with six special leave applications, three of which were granted. Judgment in the first of those was handed down on 10 December 2025: Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50 (Bed Bath 'N' Table).

The decision reiterates the High Court's previous insistence in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186 that different considerations apply when determining whether trade marks are deceptively similar under the Trade Marks Act 1995 (Cth) from whether the way that similar trade marks are used will mislead or deceive in contravention of section 18(1) of the Australian Consumer Law.

The decision also offers practical guidance to business owners when selecting a new brand or trade mark:

• Avoid adopting external store names or signage that replicate a rival’s long‑standing word order or pairing associated with that rival, even if the words are otherwise descriptive. Context and reputation matter.

• Be cautious where store "get‑up" converges with a market leader's distinctive presentation, as similarity in get‑up can reinforce an association.

• Internal documents evidencing competitive intent or awareness can be highly probative on section 18. Assume that emails and naming deliberations will be scrutinised in any future litigation.

• Success on a trade mark infringement analysis does not insulate conduct from section 18 liability. Branding must be assessed holistically in context.

The procedural history

The branding for the new soft homewares store of Global Retail Brands Australia (GRBA)

(House B&B Mark) included the word BED & BATH. Bed Bath 'N' Table (BBNT) took issue with the inclusion of BED & BATH in this branding as well as the way in which the new stores were designed (their get-up). BBNT alleged that GRBA had:

1. infringed its registered trade marks, including BED BATH 'N' TABLE; and

2. engaged in misleading or deceptive conduct in contravention of the Australian Consumer Law.

The primary judge dismissed the trade mark infringement allegation on the basis that

and BED BATH 'N' TABLE were not deceptively similar. Justice Rofe also found that GRBA's conduct was misleading or deceptive in contravention of the Australian Consumer Law. This second finding was overturned by the Full Federal Court.

The High Court upheld the appeal and restored the first instance decision with regard to misleading or deceptive conduct on the basis that the reasoning of the Full Court miscarried.

The House B&B Mark and BBNT Mark are not deceptively similar

For infringement of a registered trade mark, the comparison is between what is registered, when viewed a whole, on the one hand, as compared with the use being made of the allegedly infringing mark. The resemblance of the alleged infringement to the registered mark must be the cause of the likely deception or confusion. The look and the sound of the marks and the effect of any similarity on average consumers in the normal circumstances of trade in the relevant goods must be considered and assessed. Any actual reputation in the registered trade mark owner or elements of it, are not relevant. The notional consumer is not credited with any knowledge of how the registered trade mark is used. As the primary judge held (repeated by the High Court), "the reputation of the registered trade mark plays no role in the analysis of deceptive similarity under section 120(1)" and the "test of deceptive similarity 'must be applied whether the mark of which infringement is alleged is newly registered and almost unknown or has been prominently displayed on well-known merchandise for many years'".

For this reason, the assessment is somewhat artificial because it is not an assessment of the market realties.

The primary judge, Justice Rofe said: "The relevant comparison is the consumer’s imperfect recollection of the BBNT mark as registered with the House B&B mark as used across the entrance to a soft homewares store in a shopping centre or strip mall, against the backdrop of the surrounding circumstances set out above. The consumer has no knowledge of the actual [registered] mark, its use over many years, or any reputation associated with it."

Notwithstanding the common elements "Bed" and "Bath", which are visually, phonetically, and aurally significant parts of both marks, Justice Rofe did not consider the House B&B Mark and the BBNT Mark to be deceptively similar. The "House" element of the House B&B Mark is the significant visual and oral part of the House B&B Mark, being larger and rendered in bold and usually illuminated when displayed on House B&B shop fronts. The Full Court agreed. The case for statutory infringement of the registered trade mark was not part of the appeal to the High Court.

Use of the House B&B Mark was misleading or deceptive

In determining whether GRBA's conduct as a whole was misleading or deceptive in contravention of section 18(1) of the Australian Consumer Law, Justice Rofe referred to the previous High Court decision in Self Care, which stated that both immediate and broader context are relevant to the analysis. Relevant broader context extended beyond the issues relevant to infringement under the Trade Marks Act and included BBNT's reputation in the BBNT Mark over 40 years of use in 167 Australian stores, as well as the fact that no other retailer used the words "bed" and "bath" in their store name or external signage, rather other traders used those words primarily as category descriptors, meaning that BBNT had 40 years of "unique use". BBNT's unique "Hamptons style" get-up, which the House B&B stores also employed, was also relevant.

Justice Rofe concluded that the reasonable consumer, seeing a House B&B store for the first time would not be familiar with seeing the words "bed" and "bath" on a store front other than over the entrance to a BBNT store. The similarities in store get-up further reinforced the association with BBNT. The reasonable consumer would therefore question whether there was some kind of association between the two well-known brands, House and Bed Bath N Table, and possibly consider that House had taken over or merged with BBNT. The reputation of BBNT – specifically its use of the words Bed and Bath for over 40 years – was "crucial" to Justice Rofe's conclusion that GRBA had engaged in misleading or deceptive conduct.

The Full Court and High Court appeals

In overturning the finding of misleading or deceptive conduct, the Full Court said that the primary judgment had not explained why BBNT's reputation in the BBNT Mark – as a whole as distinct from in the "largely descriptive" words "BED BATH" or "BED & BATH" – led to the conclusion that use of the House B&B Mark was misleading or deceptive in circumstances where it was not deceptively similar to the BBNT Mark. The Full Court considered that the differences between the two marks were "substantial and obvious to anyone but the most careless observer," such that the ordinary consumer would not be likely to confuse the two marks irrespective of BBNT's reputation.

The High Court considered that the Full Court misunderstood the reasoning of the primary judge with regard to misleading or deceptive conduct, having erroneously focused on the trade marks themselves decontextualised from GRBA's conduct. That focus overlooked the other contextual matters considered by the primary judge, relevantly, the significance of BBNT's use of the words "bed" and "bath" in that order, on the exterior of the BBNT soft homewares stores, and its use of the "Hamptons style" get-up, also employed by House B&B. The way in which GRBA came to decide on adopting the House B&B branding and get up also prominently factored into the High Court's decision.

The High Court emphasised that the answer to the trade mark infringement allegation did not provide an answer to the misleading or deceptive conduct case, the scope and function of the Trade Marks Act being different from the scope and function of the Australian Consumer Law.

Subjective intention of GRBA executives

The subjective intention of GRBA also weighed in favour of a finding that the House B&B Mark was likely to mislead or deceive. The High Court took up the "evidentiary approach" of the previous High Court decision in Australian Woollen Mills Ltd v F section Walton & Co Ltd [1937] HCA 51: a trader’s own belief and purpose in adopting features associated with a rival may constitute "reliable and expert" evidence of the likelihood of deception, even absent an intention to mislead. On the primary findings, GRBA"s "wilful blindness" and deliberate adoption of "Bed & Bath" and a similar get‑up to leverage BBNT"s reputation were probative on the objective section 18 question. This was a significant finding because intention per se is not relevant to whether misleading or deceptive conduct has occurred. The High Court said:

"… if the person intending to achieve an end or object by the doing of an act is a trader in the relevant area of business, that trader's belief that the doing of an act will achieve a certain end or object and that trader's doing of the act on the basis of that belief may be taken as "a reliable and expert opinion on the question whether what [the trader] has done is in fact likely to" achieve the intended end or object. The inference that the trader held this state of mind, referred to as an "expert opinion", is relevant and forms part of the evidence before the judge to be weighed with all other relevant evidence on the ultimate objective question of fact, whether the intended end or object occurred."

Justice Rofe considered such an inference was available in this case, where GRBA was aware of BBNT and its reputation in the soft homewares sector. In fact, GRBA had BBNT in mind when choosing the House B&B Mark – an email from GRBA's Head of Brand and Media stated that the House B&B Mark would have BBNT "running scared". While Justice Rofe did not find commercial dishonesty, she found "wilful blindness" and disbelieved key evidence as "contrived" and "untenable", and the High Court accepted that these findings could provide cogent evidence relevant to section 18. Indeed, the evidence showed that GRBA saw an obvious benefit to using "Bed & Bath" to attract customers that would otherwise have gone to BBNT.