Brand protection is often overlooked by business owners focused on the day-to-day operation of a successful business. That is, until a dispute arises. For any business that has invested time and resources in the development of a distinctive brand, it is important to invest in an effective brand protection strategy. Trade mark registration is often viewed as the cornerstone of a good brand protection strategy. Given trade marks have an initial registration period of 10 years (and no limit on the number of times they can be renewed, provided renewal fees are paid), many rights holders have a false belief that their brand protection only requires occasional consideration and adjustments.

The recent cases discussed in this article demonstrate the consequences of a passive 'set and forget' approach. Successful brand protection for the modern market requires businesses to regularly evaluate the protection afforded by their own registrations, as well as proactively monitoring the applications and conduct of others. Failing to take steps to register, enforce or use your trade marks can have significant (and costly) impacts on how you currently operate or intend to grow your business in the future.

Why does early trade mark registration matter?

The Federal Court recently delivered judgment in Jacksons Drawing Supplies Pty Ltd v Jackson's Art Supplies Ltd [2025] FCA 530. In this case, Jacksons Drawing Supplies (JDS) sought to restrain Jackson's Art Supplies' (JAS) use of the name "Jackson's".

Despite operating an art supply retail business under the names "Jacksons Drawing Supplies" and "Jacksons" since about 1955 (including through physical stores in Western Australia and the Northern Territory and, since about 2006, a website available at jacksons.com.au), JDS had not sought to obtain trade mark protection for any mark incorporating "Jacksons".

JAS, also a retailer of art supplies, operated stores in the United Kingdom and a website available at jacksonart.com, which was available to Australian consumers from around 2001.

Without a relevant registered trade mark to rely upon, JDS's case proceeded on the basis that JAS had engaged in misleading and deceptive conduct and made misleading representations in contravention of sections 18 and 29 of the Australian Consumer Law (ACL) and had engaged in the tort of passing off.

JDS was ultimately successful in establishing that JAS's conduct conveyed to some ordinary and reasonable consumers that:

• The operator of JAS's website was JDS;
• The JAS website was the website of JDS;
• JAS was a company associated with JDS, such that JAS had JDS' endorsement or approval; and
• The JAS website is associated with or endorsed , approved, licensed or sponsored by JDS,

and that such representations were misleading or deceptive, in contravention of the ACL. The Court further found that that JAS had engaged in passing off, by representing, in effect, that it either was JDS or associated with JDS.

However, in order for the Court to reach this conclusion, it was necessary for JDS to lead extensive (and undoubtedly costly) evidence to establish that it had a substantial reputation in the name 'Jacksons', in connection with the supply of art products. The judgment dedicates approximately 148 paragraphs to considering evidence on this point.

Of course, even if JDS had a trade mark registration to rely on, some evidence of JDS's reputation would likely have been submitted because ACL and passing off claims are often run in parallel to trade mark infringement (and are especially powerful where a respondent is accused of mimicking more than the same name). However, a party's ability to satisfy the Court of its reputation is a significant uncertainty in litigation. A Court may find that an applicant has no reputation or alternatively, that it has a reputation but not as broad as it claims and so no misrepresentation arises despite that reputation.

One benefit of trade mark registration is that it removes this uncertainty. Had JDS held an appropriate trade mark registration in respect of the 'Jacksons' name, it could have run a more streamlined case of trade mark infringement whereby the Court would simply have had to consider whether the signs used by JAS to promote the same goods and services were substantially identical with, or deceptively similar to the registered trade mark.

The Court also found that JDS significantly delayed in taking steps to enforce its rights after becoming aware of JAS. Consequently, the Court considered that JAS had concurrently established a reputation in its name, and that it would be "practically unjust to prohibit it from continuing to conduct that business under the JAS Names. The balance of justice and injustice does not favour depriving JAS of the benefits of the business it has built up in Australia over that period."

The Court is yet to settle on the final form of orders for relief, but has indicated that it will not restrain JAS' use of its name, and that instead, will require JAS to "publish words disassociating itself from JDS on the JAS AU Site" (e.g. in the form of a pop-up or disclaimer). To that end, although JDS was successful, it is arguably a pyrrhic victory (although the question of damages is to be determined at a later date).

If JDS had sought and obtained registrations for its trade marks in a timely manner (and taken steps to enforce its rights promptly upon learning of JAS's existence), its chances of restraining JAS's conduct, and forcing them to trade under a different name in Australia would have been significantly enhanced. This case serves as an important reminder to prioritise the protection of key trade marks, especially your lead brand.

Notably, it appears JDS has adopted this learning since, shortly before commencing the Federal Court proceedings, it filed applications for a number of trade marks, including marks which have been opposed by JAS. The trade mark oppositions are on hold pending the final resolution of the Federal Court proceedings. Should the applications proceed to registration, it is worthwhile noting that those marks will have a priority date significantly later than the date JDS actually began using them. Whilst the marks might provide solid protection against any new entrants to the market after the priority date, any case that involves a third party who has used their competing mark prior to the priority date will still involve more complex evidence and arguments about who first used the mark because prior use is a defence to registered trade mark infringement. For this reason, it is critical to consider trade mark registrations as early as possible to gain the maximum benefit possible.

Why should you monitor trade mark registers and your competitors?

In National Cancer Foundation v Registrar of Trade Marks [2025] FCA 711, the National Cancer Foundation successfully appealed a decision of the Registrar to cancel the registration of "Brown Nose Day" in class 36 for "Charitable fundraising".

The Registrar took steps under section 84A of the Trade Marks Act 1995 (Cth) (the Act) to revoke the registration on the basis that:

(a) the trade mark should not have been registered, having regard to the circumstances that existed when it became registered; and

(b) it was reasonable to revoke the registration of the trade mark, taking account of all the circumstances.

The Registrar took these steps following receipt of correspondence from lawyers for Red Nose Limited (RNL), the registered owner of a number of registered marks for charitable fundraising services including "RED NOSE DAY". That correspondence requested revocation of the "Brown Nose Day" mark on the basis that the Registrar ought to have found that the mark was substantially identical with or deceptively similar to RNL's prior registered marks.

RNL did not take steps to oppose the "Brown Nose Day" mark prior to registration, nor was it an active participant in the Federal Court proceedings.

While writing to the Registrar to raise concerns regarding a competitor's trade mark registration can be a low cost and effective strategy, a party that adopts this approach does not have an entitlement to participate and lead arguments in any subsequent proceedings, as seen in the present case. If RNL ever wishes to commence its own action to revoke the "Brown Nose Day" mark, it will face the challenge that the Federal Court has already determined that the "Brown Nose Day" mark is not deceptively similar to any of the RNL marks.

All trade mark owners should keep a regular watch on the Australia Trade Mark Register (Register) for the possible entrance of similar brands in similar market segments to which they operate (or intend to operate). There is an opportunity to oppose a competitor's mark prior to registration, and this can be the opportune time to resolve a trade mark dispute – prior to the competitor investing too many resources into developing a reputation in their competing brand.

However, monitoring the Register alone is unlikely to capture all new marks, as businesses do not always file applications at the outset. For this reason, we recommend also monitoring registers for business names and company names (which may indicate use of a competing mark will commence shortly), as well as the launch of new businesses or products in your usual trade channels.

Using your registered trade marks to maximise protection

In Australia, trade marks are generally subject to a 'use it or lose it' principle. If a trade mark is not used for the goods or services it is registered for, it may be vulnerable to removal via a third party non-use application (i.e., where a third party applies to have a trade mark removed from the Register because it hasn't been used for a certain period). As a general rule if you are not using your registered mark for all categories of specified goods and services in Australia (despite how the trade mark is used overseas), you may be at risk of losing protection in unused categories and/or competitors may exploit any gaps and register similar marks for those unused goods and services.

Other Australian legal principles might assist in cases of limited use, including some recognition of 'spillover' reputation from overseas, and also the fact that marks can arguably become so well known that use of the same or a similar mark for different goods or services may still cause confusion, and by extension, constitute infringement. However, those matters require determination by a Court and so offer less certain outcomes than a well-managed and actively used trade mark portfolio.

In today’s brand-driven world, it is crucial that trade marks are used in the course of trade and that use is genuine and under the control of the registered owner. It is becoming increasingly common that global companies engage in strategic promotional activities to protect their brands, using their registered trade marks to create vibrant, themed environments that extend beyond their core products. For example:

1. The Malibu Barbie Café at Chadstone Shopping Centre in Melbourne brought Mattel’s iconic doll to life in a two-storey pop-up filled with merchandise, themed dining, cocktails at the 'Ken Kabana', and a Malibu Barbie Café x Impala roller rink. The Malibu Barbie Café showcased how a registered trade mark like Barbie™ can be leveraged and protected not just for toys in class 28, but for other registered services, such as those in Mattel's trade mark number 2238479:

Class 43: Services for providing drink; Temporary accommodation; Hotels; Coffee Shops; Juice Bar; Day Care Centers; Holiday Camp Services; Rental of chairs, tables, table linen, glassware; Providing Camping Facilities; Boarding for Animals; Retirement Homes; the above all excluding services related to foods cooked on a barbeque or the provision of barbeque facilities

2. Similarly, the Hello Kitty and Friends Café at Melbourne Central featured Sanrio’s beloved characters to craft a whimsical dining space. From themed treats to character-inspired décor, the café utilised multiple registered trade marks in different ways, including iterations of Sanrio's 17 registered trade marks for Hello Kitty™ such as trade mark number 1018919 which covers goods and services in many different classes (ie 9, 14, 32, 35, 41, 43).

Deliberately or otherwise, 'pop-ups' and other activations (provided they involve genuine use) outside of a brand's core goods and services can be a useful strategy to preserve registrations that target common kinds of infringing conduct. This is increasingly valuable in a modern market where brand collaborations are becoming more common, and consumers who see your brand used in relation to unfamiliar products or services may assume that it is done with your authorisation.

McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 is a timely example of how even globally recognised brands like McDonald’s can lose trade mark rights from not using all registered goods and services in connection with one of its trade marks. In early 2020, Hungry Jack’s launched the ‘Big Jack’ and ‘Mega Jack’ burgers in Australia. McDonald’s claimed that these names infringed its existing BIG MAC and MEGA MAC trade marks and sought to have Hungry Jack’s BIG JACK trade mark registration cancelled on similar grounds. Notably, Hungry Jack’s filed a cross-claim and argued that McDonald’s MEGA MAC trade mark should be removed from the Register due to non-use over a three-year period in accordance with section 92(4)(b) of the Act.

The MEGA MAC trade mark was registered in class 30, covering a wide range of goods including 'edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar'. Hungry Jack’s cross-claim was ultimately successful as the Federal Court concluded that several goods (ie biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, and sugar) were to be removed from McDonald’s MEGA MAC registration.

It is important to ensure that your trade marks are not only registered but are actively and genuinely used across all relevant classes of goods and services, and that specifications are drafted with this in mind. Failure to do so can result in partial or full loss of rights and weakened brand protection, allowing competitors to capitalise on perceived gaps. From the recent cases and brand activations, thoughtful and expansive use of trade marks are evidently critical for businesses concerned about maintaining their brand exclusivity and value.

If you are uncertain as to whether your current Australian brand protection strategy is fit for purpose, please reach out to us. MinterEllison's trade mark specialists have a proven track record in assisting our clients with understanding how they can exploit their brand and any limitations of their registered rights, navigating disagreements with other brand owners including through opposition proceedings, facilitating trade mark licensing, as well as defending our client's rights those effective enforcement action (including, where necessary, Court proceedings).