Flipping the Tables: High Court allows Bed Bath ‘N’ Table’s Appeal

In brief:

• The High Court of Australia has unanimously allowed Bed Bath ‘N’ Table Pty Ltd’s (BBNT) appeal in Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50 (10 December 2025), finding that Global Retail Brands Australia Pty Ltd (GRBA) had contravened s 18(1) of the Australian Consumer Law (ACL) by, in trade or commerce, engaging in conduct that is misleading or deceptive or likely to mislead or deceive.
• The conduct in question was GRBA’s use of the mark (the House B&B mark) as the name of its soft homewares stores (House B&B stores) that it launched in 2021, and including using the House B&B mark on both internal and external store signate, the House website, receipts, social media, shopping centre directories and advertising and promotional materials, gift cards and employee name badges.

• The High Court held that the Full Court’s had unduly focused on the issue of whether the trade marks were deceptively similar under s 120(1) of the Trade Marks Act 1995 (Cth) (TMA) instead of considering the immediate and broader context of GRBA’s conduct. As a result, the Full Court had conflated the separate inquiries under s 120(1) of the TMA and s 18(1) of the ACL.
• Readers may recall that there was an earlier dispute in New Zealand between Brands Limited (trading as Bed Bath and Beyond) and BBNT. A refresher on the key issues in that case is set out below. The Bed Bath ‘N’ Table cases on different sides of the Tasman are quite different in terms of both the respective market contexts and the applicable statutory lenses.

Background

Since 1976, BBNT operated a network of soft homewares stores throughout Australia under registered trade marks including “BED BATH ‘N’ TABLE” (collectively, the BBNT mark). The soft homewares sold included bed linen, bathroom products and other goods, but not beds, baths or tables. BBNT was the dominant player in the speciality soft homewares sector in Australia.

The BBNT mark is prominently used on stores and BBNT is a well-established brand with which many consumers are likely to be familiar.

BBNT had been the only retailer in Australia that used the words “bed” and “bath” in its name over 40 years, until GRBA opened its first soft homewares store using the House B&B mark.

GRBA sold kitchenware and hard homewares under a trade mark incorporating the word “House” in stores which had a “discount” look. In 2021, GRBA opened its first soft homewares store under the House B&B mark, followed by other House B&B stores.

Procedural history

At first instance, Rofe J in the Federal Court found that:

• the House B&B did not infringe the BBNT mark under section 120(1) of the TMA, because the House B&B mark was not “substantially identical with, or deceptively similar to” the BBNT mark; but
•  GRBA’s conduct was misleading or deceptive in contravention of s 18(1) of the ACL.

Rofe J explained the different results as follows:

• the issue of trade mark  infringement under s 120(1) turned on the ordinary consumer’s impression or recollection (including imperfect recollection) of the marks, with the ordinary consumer not being “credited with any knowledge of the actual use of the registered trade mark, or any reputation associated with that mark”; whereas
• the question of contravention of s 18(1) of the ACL required consideration of GRBA’s conduct in its immediate and broader context, including BBNT’s reputation in the BBNT mark considered from the perspective of the reasonable consumer of the goods.

On appeal, the Full Court of the Federal Court allowed GRBA’s appeal against Rofe J’s orders. In the view of the Full Court, given Rofe J’s “clear finding” that BBNT’s reputation was in the BBNT mark as a whole and BBNT did not establish “that it has any independent reputation in ‘BED BATH’ or ‘BED & BATH’ alone”, her Honour had erred in “not giving effect to” that finding in determining the alleged contravention under s 18(1) of the ACL.

In the Full Court’s view, neither Mr Lew’s (GRBA’s founder, director and chairman) nor Ms McGann’s (GRBA’s Head of Brand and Media) intentions provided any real assistance in determining whether GRBA engaged in misleading and deceptive conduct. The Full Court reasoned that Mr Lew’s evidence, which the primary judge treated as establishing GRBA’s “wilful blindness to the risk of confusion”, was incapable in the circumstances “of proving any reliable evidence on the objective question” of whether GRBA had engaged in misleading and deceptive conduct.

The High Court found that the reasoning of the Full Court miscarried, and that Rofe J’s reasons disclose no error of legal principle, fact-finding or reasonable process.

Full Court had conflated two different enquires

The High Court held that the Full Court’s had unduly focused on the issue of whether the trade marks were deceptively similar under s 120(1) of the TMA instead of considering the immediate and broader context of GRBA’s conduct. As a result, the Full Court had conflated the separate inquiries under s 120(1) of the TMA and s 18(1) of the ACL.

The High Court found that the Full Court’s conclusion that Rofe J did “not explain why BBNT”s reputation in the BBNT mark led her Honour to find that GRBA’s use of the House B&B mark would be likely to mislead or deceive the ordinary and reasonable consumer, even though the marks were not deceptively similar” exposes this error. In the High Court’s view, Rofe J had explained the different outcomes by reference to BBNT’s reputation in the BBNT mark.

For the question of contravention of s 18(1), the relevant circumstances included several additional factors, namely:

• BBNT’s reputation in the BBNT mark and branding as distinctive of its soft homewares stores;
• GRBA’s reputation in the House mark and branding for its House stores;
• Consumer’s knowledge over 40 years of the distinctive appearance of BBNT stores and House stores;
• BBNT’s use of the words “bed” and “bath” in that order, being unique to the exterior of BBNT stores for over 40 years and being not the natural order for reference to those words, so that they “rolled off the tongue” and were undoubtedly part of the reason those words appealed to GRBA, which could leverage off that well-known pairing;
• GRBA’s wilful blindness to the risk of confusion.

The High Court found that:

“That the marks were not deceptively similar under s 120(1) of the Trade Marks Act does not mean that GRBA’s conduct in using the House B&B mark as the name of and branding for GRBA’s soft homewares stores, as appearing on the exterior of those stores and otherwise, was not likely to mislead and deceive consumers. The primary judge’s answer to the trade mark infringement case did not provide an answer to the misleading and deceptive conduct case. The scope and function of the Trade Marks Act is different from the scope and function of the Australian Consumer Law, and the interests the former Act protects are different and have, in any event, changed over time.”

The High Court considered that the Full Court’s impermissible focus on the marks rather than the conduct in context was also exposed by the Full Court’s reliance on the fact that Rofe J found BBNT’s reputation was in the BBNT mark as a whole and not the words “bed” and “bath”. The High Court considered that the Full Court had overlooked Rofe J’s findings that:

• BBNT’s longstanding reputation in its name included the words “bed” and “bath” (in that order);
• The words “bed” and “bath” are not in their normal sequence but due to BBNT’s long-standing use of the words, “bed and bath” rolled easily off the tongue;
• Consumers are familiar with seeing those words as category descriptors inside stores rather than on the exterior of stores other than BBNT stores;
• House stores had their own distinctive get-up different from the BBNT get up;
• The House B&B stores get up used the same “Hamptons” style as the BBNT stores.

In the High Court’s view, the Full Court had conflated the concept of “distinctiveness” in trade mark law, which involves the whole mark, with the broader concept of conduct in its immediate and broader context applicable to s 18(1) of the ACL. In any event, the High Court noted that the relevant question was not whether it followed from BBNT’s use of the BBNT mark for over 40 years that the use of “bed” and “bath” by GRBA would be likely to mislead or deceive, but rather whether the primary judge’s conclusion involved material error.

Further, the Full Court had gone on to observe that it followed from Rofe J’s finding that BBNT’s reputation was in the BBNT mark as a whole that “it is the use of the composite phrase ‘BED BATH ‘N’ TABLE’ or ‘BED BATH AND TABLE’, not ‘BED BATH’ or ‘BED & BATH’ that would indicate the existence of a commercial association between the business operating under that name and another business using a different name which also included the words ‘BED & BATH’”. In the High Court’s view, the Full Court’s reasoning was flawed because the positive proposition (the specific uses would indicate a commercial association) does not prove or support the negative proposition (GRBA’s use of the House B&B mark and branding in its immediate and broader context would not indicate a commercial association). The High Court considered that the fact that the Full Court considered it did prove or support the negative appeared to flow from the Full Court’s focus on the marks, rather than the conduct in context.

The High Court considered that this also explains why GRBA’s reliance on the Full Court’s characterisation of the words “bed” and “bath” as “largely descriptive” of the products is misplaced, because that characterisation “materially downplays the significance of the primary judge’s findings about the significance of those two words, in that order, on the exterior of BBNT’s soft homewares stores, as part of the overall BBNT mark and branding”.

Finally, the High Court rejected the Full Court’s finding that Rofe J’s reasoning gives BBNT a monopoly in the words “bed” and “bath”; the terms of Rofe J’s declaration of the s 18(1) contravention identify the conduct found to have engaged the statutory proscription. The High Court stated that:

“It remains the case that ‘the possibility of blunders by members of the public will always be present when names consist of descriptive words’ and that ‘risk of confusion must be accepted’, so that ‘a name [which] is no more than merely descriptive of a particular type of business’ can be used by another business without contravening the statutory proscription on misleading or deceptive conduct or conduct likely to mislead or deceive, mere confusion being insufficient to amount to such conduct in any event. But, on the primary judge’s findings, that is not the present case.”

Accordingly, the High Court held that Rofe J did not err “when considering the [ACL] claim by not giving effect to her own finding that BBNT had no independent reputation in ‘BED BATH’ or ‘BED & BATH’”, nor was there any inconsistency between that finding and her Honours’ conclusion that GRBA’s conduct was likely to mislead or deceive consumers.

Error in dealing with the state of mind evidence

The High Court considered that Rofe J’s characterisation of the state of mind as “wilful blindness” and rejection of Mr Lew being “commercially dishonest” did not mean that her Honour had made a finding of honesty.

The High Court noted that Rofe J had found Mr Lew and Ms McGann’s evidence to be, among other things, “contrived”, “reverse engineered” and “untenable”, leading to an “astonishing level of wilful blindness” on the part of Mr Lew, attributable to Mr Lew. The High Court found that nothing was to be gained by GRBA emphasising the lack of a finding of dishonesty against it.

The High Court found that, contrary to GRBA’s submission, it is not the case that the evidentiary proportions in Australian Woollen Mills[1]are confined to cases of a trader’s use of a competitors’ trade mark or get-up wit dishonest intend to mislead consumers. In that case, Dixon and McTiernan JJ stated as a “rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely  to deceive or confuse”, and that “[i]n a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive”.

While Dixon and McTiernan JJ had referred to a “dishonest trader” achieving the end or object of misleading or deceiving consumers, neither in logic nor legal principle can the method of reasoning be so limited. In the case of misleading or deceptive conduct in contravention of s 18(1) of the ACL, a person’s dishonest intention is not an element of the statutory proscription. A person’s state of mind, directly or by analogy, may engage the approach to evidence explained in Australian Woollen Mills. The infinite spectrum of a person’s state of mind from dishonest to scrupulous honesty are all within the scope of that reasoning.

In the High Court’s view, the observation on which the Full Court relied, that “proof of a subjective intention to mislead…may be some evidence that in a border line case the respondents’ conduct is likely to mislead or deceive” is too narrow in multiple respects. The approach to such evidence in Australian Woollen Mills is not confined to cases of a subjective intention to mislead, nor are they engaged only in a “border line case”, and nor is such resulting evidence to be classified as “some evidence” only, if by that emphasis the Full Court meant that evidence resulting from the operation of the evidentiary approach is to be given less weight on an a priori basis derived from its character.

Accordingly, Rofe J’s inferences about the states of mind of Mr Lew and Ms McGann and properly attributable to GRBA, could and did provide cogent evidence relevant to the objective question of contravention of s 18(1) of the ACL. Rofe J’s findings, including about those states of mind, were sufficient to establish that GRBA had engaged in misleading or deceptive conduct or conduct likely to mislead or deceive in contravention of s 18(1).

Contrast with New Zealand: Brands Ltd v Bed Bath ‘N’ Table

BBNT had previously been involved in trade mark litigation in New Zealand against Brands Ltd, trading as Bed Bath & Beyond (BBB).[2]

The market context in NZ was quite different, with BBB and BBNT having co-existed in NZ for some time.

Since 1994, BBB had a NZ registered trade mark (the 1994 BBB mark) for “BED BATH & BEYOND” with a disclaimer to the effect that there was no exclusive right to “bed” and “bath”. BBB had another identical registered trade mark with a deemed registration date of 9 June 2014.

BBNT had a registered trade mark for “BED BATH ‘N’ TABLE”, which was registered in NZ on 4 June 2014 via the Madrid Protocol.

BBB sought invalidation of BBNT’s 2014 registration on four grounds: ss17(1)(a) and (b) and ss 25(1)(b) and (c). If successful, BBB also sought a finding that, from the outset, BBNT’s use of its mark infringed BBB’s registered trade mark. BBB also argued that BBNT’s use of its trade mark amounted to passing off and breaches of the NZ Fair Trading Act (NZ FTA).

As well as refuting those claims and relying on a number of positive defences, BBNT counterclaimed that if the marks were confusingly similar, the BBB registered trade marks were invalid.

The NZ High Court found that:

• BBNT’s 2014 mark had priority over BBB’s 2014 mark.
• On the question of invalidity under s 25(1)(b) of the Trade Marks Act 2002 (NZ TMA), the marks were similar and related to similar goods/services but the ground was not made out. In relation to the disclaimer, “Bed” and “Bath” were highly descriptive of the character of the services provided and the product sold. The very fact of the descriptiveness mitigated the relevant confusion that might be expected to arise from the fair and notional use of the same words. Notwithstanding the higher likelihood of similarity with other marks, the use of descriptive/non-distinctive words in a trade mark reduced the risk of vitiating or fatal confusion because:
  • Some confusion was to be tolerated as the price for using descriptive words;
  • The use of descriptive words reduced the capacity of the relevant marks to signify the origin of the goods or services;
  • Reasonable consumers seeing such marks would recognise the descriptive allusions for what they were; and
  • Small differences, e.g. the “&” and the “N” or “Beyond” and “Table” may well suffice to distinguish the marks.
• On the question of invalidity under s 25(1)(b), notional fair use was likely to result and probably had resulted in some confusion about the origin of the services and goods but the considerable similarity between the marks was largely a function of their incorporation of non-distinctive or descriptive words. Accordingly, some of the confusion occurred as the price to be paid for BBB’s choice of the words. Most reasonable consumers wouldn’t see the similarities as denoting a connection between the respective proprietors and would pay attention to the small differences between the marks. Hence, this ground was not made out.
• Section 25(1)(c) was not made out because this was neither a case where a well-known trade mark was unregistered but the brand was very well known nor where the goods and services offered by one party were dissimilar to those offered by the trade mark owner.
• BBNT had established honest concurrent use of its own trade mark as at 2014 and would have been able to successfully defend its application for registration.
• On the question of invalidity under s 17(1)(a), the BBB mark had more than sufficient reputation as at the relevant date, but BBNT also had an established reputation in this market. BBB’s use of descriptive terms in its trade mark necessarily diminished the reputation it could otherwise claim in those words. The assessment of likely deception or confusion must take into account BBNT’s existing reputation in the same market. BBNT’s existing use was not causing deception or confusion, or at least not to a level that was of any apparent concern to BBB. Taking into account BBB’s undoubted reputation in the existing market in 2014, the court was unable to conclude that normal and fair use of BBNT’s trade mark after that date was likely to lead to substantial confusion confusion, so the claim based on s 17(1)(a) failed.
• The s 17(1)(b) ground added little to BBB’s claims, especially in light of the court’s finding later in the judgment that there had been neither passing off nor breach of the NZ FTA.
• The claim for trade mark infringement under s 89(1)(c) of the NZ TMA failed because although the BBNT mark was similar to the BBB mark, and BBNT was using its mark in relation to goods and services which were similar to the services specified in the BBB 1994 mark, BBNT’s use was not likely to deceive or cause confusion to the requisite level or among the requisite number of people.
• The court’s earlier finding that BBNT’s 2014 trade mark was not invalid meant that s 93 precluded an infringement action under s 89(1)(c).
• On the own name defence in s 95, the wording of the section meant that companies were excluded from the defence. If that was wrong, the defence would have been established as BBNT’s use of its name was in accordance with honest practice.
• In relation to the passing off claim and breaches of the NZ FTA, it was unclear whether BBB was seeking to establish goodwill prior to 2014. There was no difficulty in establishing that BBB could establish good will at that date. The court did not understand BBB to be claiming that the descriptive words used in its name had acquired a secondary meaning. The respective logos were not particularly similar and, if anything, detracted from any suggestion of a relationship between the two businesses. There was no misrepresentation. BBNT had done no more than represent hat its own mark and get-up were associated with its own business. In obiter, the court commented that because BBNT was honestly using its own mark to do no more than signify a connection with its own business, the court would have found that it had made out the defence of honest concurrent use in respect of passing off. Although that is not a defence to breach of the NZ FTA, this finding militate against any grant of relief under the NZ FTA.
• As there was no misrepresentation, there was no damage to BBB’s goodwill.

As can be seen, The Bed Bath ‘N’ Table cases on different sides of the Tasman are quite different in terms of both the respective market context and the applicable statutory lenses.

[1] Australian Woollen Mills v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

[2] Brands Ltd v Bed Bath ‘N’ Table Pty Ltd [2023] NZHC 1766.