Six Australian trade mark cases and what the register shows

Each case ends with the marks' records in IP Australia's data as at 27 September 2026, each number linked to its record on Australian Trade Mark Search.

Four of the six cases turned on these words. Section 10 of the Trade Marks Act 1995 says a trade mark is deceptively similar to another if it "so nearly resembles that other trade mark that it is likely to deceive or cause confusion". Courts compare how the marks look and sound and the ideas they convey, allowing for a buyer's imperfect memory.

Katie Jane Taylor, born Katie Jane Perry, is a Sydney fashion designer who has sold clothes as KATIE PERRY since about 2007. She applied for KATIE PERRY for clothing on 29 September 2008, and it was registered on 21 July 2009. Katheryn Hudson, the singer known as Katy Perry, applied for KATY PERRY on 26 June 2009, including clothing, then dropped the clothing class that September.

In 2019 Ms Taylor went to court over Katy Perry clothing sold in Australia, and the singer's side asked for her registration to be cancelled. The Federal Court ruled for Ms Taylor in 2023, and the Full Federal Court cancelled her registration in November 2024. On 11 March 2026 the High Court, by three judges to two, set that aside. The majority held that a trade mark gains a reputation only for particular goods or services. The remaining questions went back to the Full Federal Court.

On the register: KATIE PERRY (no. 1264761), class 25, registered. KATY PERRY (no. 1306481), classes 9 and 41, registered.

Hungry Jack's applied for BIG JACK on 14 November 2019 and began selling BIG JACK and MEGA JACK burgers in early 2020. The judgment records evidence that McDonald's did not oppose the application. McDonald's went to court in 2020, saying the names were too close to BIG MAC and MEGA MAC.

On 16 November 2023 the Federal Court found neither name deceptively similar. BIG is a common descriptive word, the judge said, while JACK is a familiar first name and MAC an unusual one, so they convey different ideas. BIG JACK stayed registered. MEGA MAC was cut back to sandwiches for non-use on biscuits, cakes, coffee, tea, sauces and other goods it listed. McDonald's won one claim: the court found Hungry Jack's "25% more Aussie beef" advertising misleading.

On the register: BIG MAC (nos. 271329 and 271330), filed 14 August 1973. MEGA MAC (no. 1539657), filed 7 February 2013. MEGA JACK (no. 2115199), filed 27 August 2020. All are registered, as is BIG JACK (no. 2050899).

The National Cancer Foundation applied for BROWN NOSE DAY for charitable fundraising on 7 May 2020, for a bowel cancer campaign. The examiner compared it with Red Nose Limited's RED NOSE DAY marks and found them sufficiently different. The acceptance was advertised on 8 October 2020, opening the two-month opposition period. No opposition was pursued, and it was registered on 15 December 2020.

On 25 October 2021 Red Nose Limited asked the Registrar of Trade Marks to revoke the registration. Section 84A of the Act lets the Registrar revoke a registration that should not have been made, within 12 months of registration. A delegate revoked it on 28 February 2023. The Federal Court restored it on 30 June 2025: BROWN comes first, and "brown nose" has its own well-known meaning. The Full Federal Court dismissed the Registrar's appeal on 24 July 2026.

On the register: BROWN NOSE DAY (no. 2086028), class 36, registered. RED NOSE DAY (no. 1022837), classes 36 and 45, registered.

Allergan owns BOTOX, including a defensive registration for anti-wrinkle creams, goods it doesn't sell under that name. Self Care sold a FREEZEFRAME cream called PROTOX. Allergan's claim that PROTOX was too close to BOTOX failed in the Federal Court, succeeded in the Full Federal Court in 2021, and failed in the High Court on 15 March 2023.

The High Court accepted that the words look and sound alike, sharing the ending "OTOX", but found no real danger that a buyer would wonder whether the products came from the same source. It also held that the registered mark's reputation plays no part in judging deceptive similarity in a claim of this kind.

On the register: FREEZEFRAME PROTOX (no. 1653383), class 3, filed 20 October 2014, registered. BOTOX (no. 551279), class 5, filed 28 February 1991, registered.

Cantarella Bros registered ORO, Italian for "gold", for coffee. In 2014 the High Court held, by four judges to one, that ORO could stay registered: what counts is a word's ordinary meaning to people in Australia who deal in or buy the goods, and ORO wasn't shown to describe coffee to them.

A later dispute with Lavazza ended differently. Cantarella first used ORO in Australia on 20 August 1996, but the court found Caffè Molinari had shipped coffee in ORO packaging to Australia in 1995 and 1996, so Cantarella wasn't the mark's owner. The Federal Court cancelled both ORO registrations on 17 November 2023, the Full Federal Court dismissed Cantarella's appeal on 14 February 2025, and the High Court refused special leave to appeal in 2025.

On the register: ORO (nos. 829098 and 1583290), filed in 2000 and 2013, both cancelled. A new ORO application by Cantarella (no. 2526336), filed 27 February 2025, is accepted but not yet registered.

Jacksons Drawing Supplies has sold art supplies under that name since its first Perth store in 1955. Jackson's Art Supplies, a UK retailer, has had a website open to Australian buyers since about 2001, launched an Australia-specific site in October 2018 and set up an Adelaide warehouse in 2022. The Perth business went to court in December 2022.

The judgment states that "No trade mark registered in Australia is involved", so the case ran under the Australian Consumer Law and passing off, which meant proving the Perth business's reputation. On 23 May 2025 the Federal Court found misleading conduct and passing off, but refused the wider orders sought, noting the UK seller had used the name in Australia openly since at least 2005. Final orders on 12 September 2025 let it keep trading here, with a notice on its Australian site that it isn't affiliated with Jacksons Drawing Supplies.

On the register: JACKSONS (no. 2293046), filed by Jacksons Drawing Supplies on 11 August 2022, and JACKSONS (no. 2692289), filed by Jacksons Art Supplies Ltd on 2 September 2026, both not yet accepted. Our guide to business names and trade marks explains what a business name alone gives you.