A national charity has won the right to use Brown Nose Day as a trade mark in its fundraising after a challenge from Red Nose Day.
In a Federal Court judgment delivered yesterday, the National Cancer Foundation (NCF) won an appeal against the revocation of its trade mark, which occurred after the trade mark’s registration was challenged by Sudden Infant Death Syndrome charity Red Nose Limited (RNL).
NCF argued the Registrar of Trade Marks should not have revoked its Brown Nose Day trade mark on the basis it was deceptively similar to Red Nose Day.
Justice McEvoy found the trade mark was not deceptively similar to any RNL trademarks, including Red Nose Day and Nose Day, and allowed the appeal.
“The expression ‘Brown Nose’ is plainly confronting, and the evidence is that the NCF adopted the theme as an opportunity to use a mixture of humour, shock, affront, and concern to raise awareness of bowel cancer,” he said in his 25-page decision from the Victorian registry.
In April 2020, after NCF applied to register the trade mark Brown Nose Day, registered trade marks owned by RNL were identified as potential conflicting trade marks under s 44 of the Trade Marks Act 1995 (Cth).
These included Red Nose Day, and five other RNL trademarks in White Nose Day, Black Nose Day, Blue Nose Day, Yellow Nose Day and Green Nose Day. RNL had not trademarked Brown Nose Day.
The examiner found that each of the marks was “sufficiently different” to Brown Nose Day, and the trade mark was accepted for registration and advertised for acceptance in the Australian Official Journal of Trade marks. No notice of opposition was filed and it was registered in December 2020.
In October 2021, RNL requested the revocation of the registration. After a hearing in December 2022, the trade mark was revoked in February 2023.
In its appeal, NCF submitted that in comparing the trade marks, considerations included:
- the circumstances in which the trade marks would be used, and the character of the probable audience;
- the look and sound of the trade marks;
- a trade mark’s combination of features, including the arrangement and use of graphic elements, the orientation of the trade marks and their constituent parts, and their overall shape, geometricity and style; and
- whether there was a real, tangible danger of the trade marks being confused.
The registrar’s submissions included that the fact that “brown nose” had a colloquial meaning was not sufficient to remove the likelihood of confusion.
“The registrar submits that in this case it is clear that the combination of colour name plus Nose Day is highly distinctive in the context of charitable and fundraising services,” Justice McEvoy said.
“While there is evidence of other organisations using Day in the context of fundraising activities, the registrar submits that there is very limited evidence of any other organisation ever using the words Nose Day in that context, and no evidence of any other organisation using the combination of a colour name plus Nose Day at any time.”
It submitted that the colour in each trade mark “would likely be seen as serving a primarily descriptive function, denoting a different form of fundraising activity from the owner of the coloured Nose Day marks, rather than indicating a separate trade source”.
In deciding the trade marks were not deceptively similar, Justice McEvoy accepted that the word Brown readily distinguished the trademark visually, orally and conceptually from the Red Nose Day trademarks, especially because it was the first word in the trade mark.
“Secondly, and also significantly, the commonly understood and distinct colloquial meaning of the words Brown Nose (that is to say, someone who is a sycophant, or someone who flatters or tries to carry favour) strongly distinguishes the trade mark as to its meaning and the concept it conveys from the RND marks.
“I accept, as the NCF submits, that the ordinary meaning of Brown Nose points strongly away from any connection at all with the RND marks and gives the trade mark a distinctive meaning and import.”
He also accepted that Red Nose had a distinct and well-known connotation to comedy, often being associated with clowns.
He said it was common for trade marks used in awareness and charitable fundraising campaigns to focus on a specific time period, such as “day”, and to combine a colour, an object and time period; and that the public was adept at distinguishing between such campaigns.
He said he also accepted evidence that “charitable donations are a highly involved category leading consumers to give careful consideration to what donations they might make”.
The registrar was ordered to pay costs.
Share this article