Bed Bath ‘N’ Table Pty Ltd (ACN 005 216 866) v Global Retail Brands Australia Pty Ltd (ACN 006 348 205)

[2025] HCATrans 55

[2025] HCATrans 055

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Melbourne  No M32 of 2025

B e t w e e n -

BED BATH ‘N’ TABLE PTY LTD (ACN 005 216 866)

Appellant

and

GLOBAL RETAIL BRANDS AUSTRALIA PTY LTD (ACN 006 348 205)

Respondent

GAGELER CJ
GORDON J
EDELMAN J
JAGOT J
BEECH‑JONES J

TRANSCRIPT OF PROCEEDINGS

AT PERTH ON TUESDAY, 12 AUGUST 2025, AT 10.00 AM

Copyright in the High Court of Australia

MR J.T. GLEESON, SC:   May it please the Court, I appear with MR I.P HORAK, KC and MS L.E. DAVIS for the appellant.  (instructed by Phillips Ormonde Fitzpatrick Lawyers)

MR B.W. WALKER, SC:   May it please the Court, I appear with MR B.N. CAINE, KC, MR P.J.T CREIGHTON‑SELVAY and MS F.C. ST JOHN for the respondent.  (instructed by DLA Piper Australia)

GAGELER CJ:   Thank you, Mr Walker.  Mr Gleeson.

MR GLEESON:   Could I ask your Honours to take up Self Care 277 CLR 186, which is in the materials in volume 3 at tab 12. The Court handed down that decision on 14 December 2022

The Court handed that decision down on the second‑last day of the main trial in this matter, but by the time final closing submissions were made, her Honour had the benefit of that decision.  We submit that it lays down a critical proposition of law that is relevant and perhaps dispositive of this appeal.  Could I take your Honours to the key paragraphs of Self Care.

Could I ask your Honours to go to paragraph 28 of Self Care.  This is in respect to the action for trade mark infringement under section 120 of the Act.  The Court, in identifying the notional buyer, excluded from that person knowledge of five matters.  Firstly, the:

actual use of the registered mark –

Secondly:

the actual business of the owner of the registered mark –

Thirdly:

the goods the owner produces –

Fourthly:

any acquired distinctiveness arising from the use of the mark –

And then fifthly, as the judgment went on to show:

any reputation associated with the registered mark.

So, in the section 120 inquiry, which is artificial and based on a construct, those five related matters are excluded.  Whereas, of course, under the ACL inquiry, they become central.  Self Care clarified the law that there is the fundamental distinction between the two causes of action in this respect.  If I could take your Honours to paragraph 29, “the notional buyer” is again referred to, and:

The correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer’s mark (as actually used).

Emphasis of the Court, and the footnote refers to Shell 109 CLR 407, Wingate v Levi, MID Sydney.  That reference to the alleged infringer’s mark “as actually used” is also important in this appeal, because although that allows full reference to the use impugned, including – as this case showed – disclaimers, the rest of the packaging and the like, it is not an inquiry into the reputation or history of use of the infringer.  It is looking, rather, at the use that is before the Court.

That is a second sense in which the ACL inquiry is necessarily broader, because in the ACL inquiry, a reputation and longstanding use that the infringer may have may also be part of the critical context to be brought to account.  Now, on this question of the trade mark infringement, the basic paragraph we rely upon is paragraph 28, but the Court elaborates that point in various ways at paragraphs we also rely upon.  I will just give the references:  paragraph 33, where the Court expressly says it:

is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit”.

Reference Murray‑Goulburn, Henschke, Swancom.  So, that paragraph takes up the point I just made that not only is it a notional buyer with an artificial construct of knowledge of the plaintiff’s mark, it is also not looking at the totality of the conduct of the defendant as it would be in a passing off suit.

Then, to similar effect, paragraph 37, where the Court explains in the final sentence that the reason that reputation cannot be considered in the trade mark context is that it would then create a variable level of protection which would:

be inherently uncertain.

At paragraph 40, otherwise you would run:

the risk of collapsing the long standing distinction between –

trade mark:

infringement and passing off.

And then a reference to Swancom in the Full Court.  And particularly, paragraph 49, that:

The inquiry under s 120(1) . . . is not concerned with . . . “the commercial value or ‘selling power’ of a mark”.

Reference Campomar in this Court, quoting the Third Restatement of Unfair Competition.  So, all of that is not done in the trade mark infringement action, whereas when the Court came to deal with the ACL action, particularly at paragraph 80 and following, while the Court said the principles were “well established”, the Court nevertheless went a little further by providing a methodology – a very helpful methodology for how one steps through the ACL inquiry.  The first step: 

identifying with precision the “conduct” said to contravene s 18 –

second step, is it:

“in trade or commerce” –

third step, what is the “meaning” which the conduct conveys; and fourth step:

in the light of that meaning –

is it:

“misleading or deceptive or . . . likely to mislead or deceive”.

Then 82 and 83 give some further guidance to the third and the fourth steps, including the need, in 82, to view the conduct:

as a whole and its notional effects, judged by reference to its context, on the state of mind of the relevant person or class of persons.

Including “immediate context” and:

broader context of the relevant surrounding facts and circumstances.

Citing Parkdale v Puxu, Butcher, Campbell and TPG Internet, all of this Court.  So, that paragraph 82 tells us that we are now opening the frame, critically, to the immediate and the broader context, which will include all aspects of reputation and use of both the plaintiff and the defendant.

Now, that may seem tolerably clear, we hope it is, but I should say the respondent in their written submissions at paragraph 22 and in their outline this morning has referred to an early decision of this Court in Henry Clay v Eddy 19 CLR 641, which is at volume 3, tab 9. The proposition which the respondent takes from Henry Clay is that, notwithstanding everything I have just said, assessing the degree of resemblance between the competing trade marks through an artificial trade mark prism remains an important – an essential aspect of the ACL and passing off inquiry.

They reference in particular – on the last page of the judgment – Justices Gavan Duffy and Rich, who, having found there was no trade mark infringement, went on to say there was also no passing off and: 

The resemblance of the marks . . . is, of course, important as an element in this inquiry, but only as an element.

Now, in addition to the statement “but only as an element”, there is a more fundamental reason why we submit Henry Clay is now of no assistance in this area of law.  That is because, if your Honours look at the headnote, the proposition of law that it stands for under the Trade Marks Act 1865 (NSW) is the very proposition that this Court has now rejected in Self Care under the current Act – the current Commonwealth Act – because it stands for the proposition that the Court must be:

satisfied that the use by the defendant of his mark is likely to lead to deception, and for that purpose the Court must take into consideration all the circumstances surrounding the use of both marks.

Where that is right under the Trade Marks Act 1865 (NSW), it is not correct under the current Trade Marks Act and is of no assistance, therefore, in applying the ACL or passing off.

GAGELER CJ:   Was Henry Clay referred to in Self Care?

MR GLEESON:   We have checked, and it was not, your Honours.

GORDON J:   But what was addressed in Self Care was the fact that the Act had changed.

MR GLEESON:   The Act had changed, yes.

GORDON J:   And the history of the Act had ultimately changed, fundamentally, into what was to be taken into account, and that history is set out.

MR GLEESON:   Yes, and that is exactly what emerges here, because the Chief  Justice dissented on this point and, in fact, at page 646 to 647, reached, essentially, a Self Care approach but under the very old Act, whereas the majority judges, under the very old Act – to take one example at page 651, Justice Isaacs, in the middle paragraph, regarded:

the monopoly acquired by registration is not different in character or effect from the monopoly acquired by user.

So, the idea was, at least at that very early stage, the statute had not moved very far from what was thought to be the common law.  So, our short submission is your Honours should put Henry Clay to one side as of no assistance in this appeal, particularly under the modern Trade Marks Act and under the ACL passing off.

Your Honours, our second proposition is that the primary judge perfectly correctly applied Self Care, which explains why her Honour took different approaches to what was, in some senses, an overlapping body of evidence and, correctly, while rejecting the trade mark infringement case, correctly upheld the ACL case.  So, what I now propose to do is just to show your Honours they key parts of where her Honour, instructed by Self Care, took one approach to the trade mark infringement case and then a very different approach to the ACL case, correctly so.

GAGELER CJ:   Mr Gleeson, this is ground 1 of your appeal, I think, effectively, you are saying that the principles are the principles set out in Self Care, they were applied correctly by the primary judge ‑ ‑ ‑ 

MR GLEESON:   Yes.

GAGELER CJ:   And then misapplied by the Full Court.  Is that right?

MR GLEESON:   That is where I am going – “misapplied” in the sense of not really confronted, because – the essential error was this:  based on Self Care, if the Court is hearing an ACL passing off type case, one does not start with what is a counterfactual and irrelevant question:  what would be the position when the consumer, who had no knowledge of our 40 year history but knew of our registration, came across a House Bed & Bath store in the Doncaster Shopping Centre.

If the answer be, for a trade mark purpose, that they are not perceptively similar, you do not start the ACL inquiry by saying:  that is my stake in the ground.  The starting point is that the mark is not deceptively similar, so now the onus is on the plaintiff – why is it, by way of exception, that we somehow might get a different result in ACL?

As a matter of methodology – we say it follows from Self Care – that is not the way you approach the case, and yet that is what the Full Court effectively said was the way to approach the case.  The way you do approach the case, as the primary judge did, was to say my starting point is what is the body of knowledge, including reputation and use, which the reasonable consumer brings to mind when they are passing that House Bed & Bath store in Doncaster?

In the light of that body of knowledge, is the meaning conveyed that there is some association or affiliation between the stores, or is the meaning conveyed, as they would have it, these are the House people, but they happen to now be offering you, inside the store, some products for the bed and some products for the bath.

So, that is the error we submit in the Full Court, your Honour.  But one way of understanding why the primary judge correctly applied Self Care is for you to compare two paragraphs, because if you compare paragraph 423 with paragraph 509, in 423 – which is in the middle of the trade mark analysis – her Honour identified contextual matters, consistently with the limitations of Self Care, and at 426, her Honour instructed herself that:

any reputation that BBNT has in its BBNT mark must be put to one side, together with any factual distinctiveness that may have accumulated with respect to the mark over the four decades of use.  It is the BBNT mark as registered which is subject to the imperfect recollection, nothing more –

So, that is the correct artificial trade mark construct, and when applied to the facts and to the context, the trade mark result you really see between paragraph 436 and 442.  What you see at 436, and none of this has brought to account our reputational use, is that if you are merely doing mark on mark, the appellant had some strength in its trade mark infringement case.  That is, they:

have in common . . . two of their three words . . . The words “BED” and “BATH” (in that order) provide a natural alliteration when spoken and are visually, phonetically and aurally significant parts of both marks.  The consumer may not recall whether the words are capitalised but is likely to recall the order . . . Neither word is directly descriptive of the soft homewares covered by the BBNT registered marks, or the goods sold in House B&B stores –

because:

there are no beds or baths –

inside.  And then her Honour says:

Whilst the words “bed” and “bath” might be commonly used inside shops as category or navigational descriptors –

that is, inside:

the ordinary consumer would be aware that they are not commonly used in shop names and external signage . . . good reasons to think that the House B&B mark may cause confusion –

In effect, that was our case in a trade mark construct at its highest.  And then her Honour says no, you do not get there, and, essentially, doing the mark on mark analysis, we fail for three reasons:  paragraphs 438 to 439, the first reason is that the words “‘N’Table” which end our mark did not appear in the second mark; the second reason, paragraph 440, “House”, which is a significant part of their mark, is obviously not in our mark; paragraph 441:

presentation and orientation of the marks is also important.

There are differences there.  So, we lost trade mark because of 438 to 441, and her Honour reminds us again at 442, she still has:

not taken into account BBNT’s reputation –

because it is irrelevant to that point.  So, one can see from those paragraphs that our reputation and use has been excluded, but also, as per Self Care, the reputation and use which they had in their mark has also been excluded, because the inquiry is the narrower mark on mark inquiry.

So, I asked your Honours to note that paragraph 423 is the context in which trade mark is done, and then the comparison is with judgment paragraph 509, where her Honour identified the broader context for the ACL as including 11 matters.  This, we say, is the correct way to do it, you do not search by way of exception for a different result, you identify the immediate and broader context.

And of those matters, your Honours might observe that the first four matters are about our reputation and use and our get‑up.  All of those matters were correctly excluded from the trade mark inquiry.  And so, the consumer, coming to look at the House Bed & Bath store brings these four matters to mind, as opposed to saying:  but what happened when I looked at the register and nothing else?

The second group of matters, at paragraphs (f) to (h) – I will come back to (e) – are about their reputation and use.  That is, the respondent’s reputation and use.  There are two critical features of that.  They have:

an extensive reputation in the brand House –

in the hard homewares segment of the market, whereas our reputation, as per paragraph (a), is in the soft homewares section of the market.  Secondly, their style, their typical style, is a:

“discount” look –

cluttered discount look – and so we now bring to account that the hypothetical consumer is coming across their store with this background knowledge that the appellant has this enormous reputation in the soft homewares market, for Bed Bath ‘N’ Table, whereas we are now seeing – the consumer says – someone who I know has previously been in the hard homewares market, with the cluttered discount look, now coming into the domain of the appellant and presenting a composite brand – “House Bed & Bath” – so, that has to be factored into account.

The third group of findings in this paragraph, which are paragraphs (e), (i) in the first sentence, (j) and (k) are really more general findings about the market.  They are findings which were brought to account in the trade mark analysis, so they can come to account in both.  The exception I make from that is the second sentence of (i), which is a critical finding for her Honour.  The appellant:

therefore has over 40 years of “unique” use.

That is, as it were, a secondary finding which has two planks built in it.  The first is:  we have our 40 years of use, where we use “bed” and “bath” as part of our name, Bed Bath ‘N’ Table, but it is 40 years of “unique” use, because no one else has done it in the soft homewares market over that period.  So, that finding – “40 years of ‘unique’ use” – which is central to the ACL and the passing off, was correctly irrelevant in the trade mark case.

So, that is the “broader context” – paragraph 509 – and when one compares that to 423, one sees, correctly, her Honour is doing a fundamentally different inquiry.  Then, 510, the “immediate context” is:

The prominent use of “House” in the House B&B mark and the use of that mark on a soft homewares style shopfront.  Also relevant is the appearance of House B&B stores.  They are different to the typical House store with which consumers are familiar, with its cluttered appearance and discount signage.  House B&B stores adopt the “Hamptons style” look of the other soft homeware retailers.

That is, the appellant plus others.  So, what you see in 510 is, again, an opening of the frame to material which could not have been looked at in this fullness in the trade mark case.  Just to give your Honours what her Honour had in mind there, the typical usage is paragraph 57.  That is the cluttered discount look; this is when they are in the hard homewares section of the market.

Then, in terms of what is the impugned use – there are a number of photos in the judgment, but we have sought to give your Honours, in the appellant’s supplementary book of further materials, better versions of those photos.

GAGELER CJ:   This is the “Hamptons” look, is it?  The “Hamptons” look?

MR GLEESON:   Yes.  You cannot fully see in the book the “Bed”, but now you can see the “Bed” when you see the full photo.  So, in that supplementary book, at page 5 – this is the Doncaster store – and you can see their composite mark, “House Bed & Bath”.  You can see the two brands have been brought together.  That is, their brand plus the first part of our brand.

You can also see that the “Bed” and the “Bath” is in the block capitals, and the block capitals – the consumer knows – are typical of how “Bed Bath ‘N’ Table” is presented.  The finding to that effect is at paragraphs 30 to 32.  So, they have taken the first part of our name, they have taken it in our order, they have taken it in our block capitals, they have added it to their name, they have moved into our domain – soft homewares – and they have chosen Hampton style, which is not unique to us but is typical of the soft homewares.

Your Honours will see on page 5, on the left‑hand side, the “Bed”, but the photo at page 6 is, I am told, a continuation of the photo at page 5.  So, that is the warm comforting bed that is inviting one into the soft homewares store.  On page 6 you can see, in front of the bed, you have “House Bed & Bath” as well, so ‑ ‑ ‑

GORDON J:   On page 118 of the core appeal book, after paragraph 515, there are two alongside each other.  Is that the same idea?

MR GLEESON:   That is the same idea.  That is Chadstone.  I have given you pages 5 and 6, which is Doncaster.  For Chadstone, if your Honour wishes to see the better version of that, it is at page 11 of this book.  So, page 11 is paragraph 515, and you see the features I have just mentioned.  The rest of the book are simply some other examples given by Mr Lew of how it is used elsewhere – you have all the features I have just mentioned.

The task as her Honour correctly saw it, going through the four steps – her Honour starts at paragraph 504, where she identifies the relevant conduct – step 1.  Step 2 is:

Trade and commerce –

That is straightforward.  Step 3, from paragraph 507 and following, her Honour looks at the “broader context” – 509 – the “immediate context” – 510.  Then, 511 to 514 covers two aspects.  One is what will be ground 2 of the appeal, which is the deliberate borrowing and its significance for the case.

Secondly and importantly, in paragraph 514, her Honour is not just making findings about deliberate borrowing – which she is – but she is making a finding that links our reputation to the way in which the consumer perceives the words “Bed & Bath” when they appear in their name.  If your Honours can cross‑refer to paragraph 175, Mr Lew – their principal – gave evidence that he chose Bed & Bath over the other two alternatives.  The other two alternatives are at paragraph 146:

Will have Bed bath and table running scared.

There are three options:

HOUSE bed & bath.

HOUSE BATH AND BED –

That is reversing our order and disrupting the natural alliteration and what the consumer might draw by way of association, and:

HOUSE BEDWORKS –

So, he chose “House Bed & Bath” he says at paragraph 175 for three reasons.  The first is it is a “category descriptor”.  That is the evidence her Honour rejected, as I will come to.  Secondly, he said:

“BED & BATH” “rolls off the tongue” more easily than “Bath & Bed” –

And the third reason is a variation on the first reason.  What her Honour has found at 514 – and this finding was not challenged in the Full Court in the notice of appeal and has not been really addressed in the Full Court’s judgment – is the suggestion that:

“BED & BATH” “rolls off the tongue” more easily than the other two names . . .is in all likelihood the result of the 40 years of use of those words in Australia by –

the appellant:

as part of its name.  It is not the natural order for reference to those words. 

So, that is a finding of fact linking our use and our reputation to the reason why “Bed & Bath” rolls off the tongue and, therefore, part of the reason why – when the consumer comes to see their use of the name House Bed & Bath – they are likely to draw an association with us.  So, that paragraph 514 is important because, as you will see in the sentence just a little further down:

Notwithstanding that –

the appellant:

does not have an independent reputation in the words “BED BATH” alone –

So, that is bringing to account the finding at paragraph 120, that we do not have a reputation in those two words alone.  Nevertheless, the appellant’s:

longstanding reputation in its name which included the words “bed” and “bath” (and in that order) is undoubtedly part of the reason that those words appealed to –

the respondent:

which could leverage off that well‑known pairing of words in entering a new market for the first time.

In that finding, which we defend, her Honour has brought together the subjective and the objective and has correctly opened the frame to the entirety of the broader and the immediate context and has not been distracted by conclusions in the trade mark area.

At that point, her Honour has almost concluded her reasoning.  At 515 to 517, her Honour brings to account the broader get‑up, which reinforces the association that consumers may draw.  At 516, her Honour says:

The reasonable consumer would not see the words “bed” and “bath” in the House B&B store name primarily as category descriptors.  Consumers are familiar with seeing those words used as category descriptors inside stores . . . not on the exterior –

So, this is the finding of our unique use, which is brought to account as part of the overall assessment.  So, 517, they:

would recognise that it is not a House store of the kind that they are used to seeing.  Although the “House” logo is displayed prominently, it does not have the cluttered “discount” look . . . but rather has the appearance of the typical soft homewares stores with which the consumer is aware, such as BBNT or Adairs.

And 518, is the conclusion.  At 519, her Honour is correctly addressing herself to the question that there are consumers who would be likely to be drawn into:

the House B&B store in the belief that is has some association with –

us, and the confusion that arises is:

more than “merely transitory or ephemeral” . . . but rather may have . . . led a consumer to purchase products from House B&B in the mistaken belief that it was –

us or our products.  At that point, her Honour has referred to Justice Beach in State Street, and your Honours might cross‑refer paragraphs 488 and 489, where her Honour has set out those principles in detail.  So, the only part I wanted to add on to that reasoning at the moment, is just on paragraph 516 ‑ ‑ ‑

EDELMAN J:   Where is all the detail of this going?  If you are right in your submission about the legal approach that was taken by the Full Court – we do not have all of the evidence that was before the primary judge; we have the findings, we have the core of the evidence – are there not any difficulties with us reaching a different conclusion from the primary judge in circumstances where the primary judge has had a longer period of time, more submissions, all of the evidence in relation to these findings of misleading or deceptive conduct?

MR GLEESON:   Well, we think it is pretty straightforward.  If the primary judge has applied the correct legal approach, made a series of reasoned findings by reference to all that evidence with that benefit – if the Full Court has upset that, based on what is either an error of law or an error of methodology, all that is left for your Honours to do is to say that was an error in the Full Court, therefore the primary judgment stands.

You do not need to do any further exercise, because the interference with this judgment is not with any of these findings I am taking you to, it is with – as I say – either a legal or a methodological approach.

GORDON J:   And there is no notice of contention.

MR GLEESON:   And there is no notice of contention.  So, in that sense, it is pretty simple.  If I can now show you that the Full Court did adopt an erroneous approach ‑ ‑ ‑

BEECH-JONES J:   So, to just be clear, you are taking us to this to show the primary judge’s methodology was right and the Full Court’s methodology in concluding that that was wrong was itself wrong?

MR GLEESON:   Yes.  So, all I had wanted to give you by way of the underpinnings at this stage was just with respect to 516.

BEECH-JONES J:   Is that 506?

MR GLEESON:   Paragraph 516, which is an important plank in the primary judge’s approach.  I wanted to show you that her Honour had first identified, at paragraph 11, that this was the essential defence raised by the respondent, that when the words “bed” and “bath” were used in their mark, they were:

purely descriptive –

they were:

category . . . descriptors . . .  the words do no work in designating commercial origin –

That was their key point.  So, her Honour needed to address that key point at various parts of the case.  She did so in the subjective case that I will come to, under ground 2, but objectively, she did it in at least three places.  I can just give you the references so you can see 516 has got a solid underpinning in the materials.

Firstly, at 382, her Honour records the argument that although the words appear in their mark, they are “inessential” to the mark, they are merely “descriptive”.  That was relied upon for an argument that there was no trade mark use.  Her Honour rejected that argument at 399 to 405.  So, her Honour found that “House Bed & Bath”, as a composite mark, is used as a trade mark.  That includes the “Bed & Bath” words.  Her Honour finds, at 405, that:

The running scared email –

was:

a branding discussion –

I might just cross‑refer back to Self Care to a different paragraph, paragraph 60, where your Honours distinguish between use as a mark and the subsequent question of deceptive similarity.  Your Honours said some cases have run them together, they are different questions.  Her Honour is correctly approaching – there are different questions.  At this stage she is saying:  you are using “House Bed & Bath” as a mark.

Then her Honour comes to the next stage, which is deceptive similarity.  In that context of deceptive similarity, the two critical findings are 431, where her Honour says that:

the words “bed’ and “bath” –

in each mark do not perform:

a purely descriptive role . . . Both sell bed and bath related products –

They:

are more allusive than directly descriptive.

The concept of words being used allusively rather than merely descriptively, if I could give you a reference in the “tub happy” decision in this Court.  That is, Mark Foy’s v Davies Coop and Company 95 CLR 190. It is in the supplementary JBA at tab 2. The reference comes from Justice Williams’ judgment at page 201 in a trade mark context, but that is notion that “tub happy” is not purely descriptive. The words are a:

“covert and skilful allusion” to the quality of –

the goods.  They convey an impression and for that reason, in a trade mark context, they are not simply a direct reference to the character of the goods.  So, that is probably what her Honour had in mind when she said:

more allusive than directly descriptive.

The third place her Honour made the finding is at paragraphs 501 to 503, particularly 503, and that is where her Honour explained why this case is not in the territory of the Sydney Building Information Centre or the Hornsby Building Information Centre.  They are cases where a series of solely descriptive words have been put together and they have not acquired any composite distinctiveness, unlike the present case.

Can I then come to how the Full Court dealt with this, and then I will come to ground 2.  I might just identify, from the grounds of appeal to the Full Court, the grounds that, it seems, got up.  It is a bit hard because the Full Court has not directly addressed itself to the grounds, but the grounds start at page 154.

Ground 1 is a composite ground which does not have specific content.  Ground 2 is the ground that, if your reputation is in the whole of Bed Bath ‘N’ Table, rather than in some part of that name, you cannot win in ACL passing off.  Ground 3 is the ground that most clearly exposes the methodological area, because that ground builds off the finding of:

“substantial and crucial differences” –

between the marks, in the reasons at 437 and 445.  So, that is the trade mark reasons, with the artificial inquiry.  Then it spells out some of those reasons at 439, 440 and so on:

the primary judge should have held –

it:

did not contravene the Australian Consumer Law or involve passing off.

That, most clearly, exposes the methodological error that you start with the finding in the trade mark area and, having made that finding, you continue to give central weight to the mark‑on‑mark comparison, and therefore you lose under ACL or passing off.

BEECH-JONES J:   Mr Gleeson, the concluding words to ground 3:

the primary judge should have held that the use by the Appellant of the House B&B mark did not contravene the Australian Consumer Law –

Was that your client’s case?  That is, that it was the use of the mark.

MR GLEESON:   No, the case was the conduct, including the use of the mark, but it was the use of ‑ ‑ ‑

BEECH-JONES J:   Everything.

MR GLEESON:   ‑ ‑ ‑ everything; what I have shown you in the pictures, in the history of our reputation and use and their reputation and use.  So, ground 3 had the error inherent in it.  Ground 4 was a challenge to the finding that the words:

were “more allusive than purely descriptive” –

And that ground had within it, as you will see in (i), (ii) and (iii), that, yes:

there had been “substantial use” of the words “bed” and “bath” as navigational or category descriptors –

inside stores, and that her Honour somehow made an error that she should have reasoned from that use inside stores to not make the findings about the words being allusive.  That ground did not get up.

Ground 5 does not seem to have gone anywhere.  Ground 6 – this is ground 2 today – accepted the finding of “wilful blindness”.  So, accepted the credit findings and said that is not enough to enliven the Australian Woollen Mills inference.  Ground 7 suggested her Honour might have applied the wrong standard of confusion.  That did not get up.  And 8 did not go anywhere.

So, the critical grounds we think that the Full Court did place reliance upon are really grounds 2 and 3.  Now, can I show you what the Full Court did, commencing at ‑ ‑ ‑

GORDON J:   And then 6, in relation to the ‑ ‑ ‑

MR GLEESON:   And 6, yes.  Now, the Full Court, at paragraph 75, that we submit is the wrong starting point.  You do not start by asking whether the marks are not deceptively similar within a narrow artificial comparison and then look for some exception to find a different result.  You start exactly where her Honour started.  That is the first error.  Then, at 77 to 78, her Honour says our reputation as found was in:

the composite phrase “BED BATH ‘N’ TABLE” –

It was not a separate reputation in:

“BED & BATH” –

It appears, at 77, that the Full Court is saying it is the composite phrase, and only the composite phrase, that is capable of indicating a commercial association.  Now, as we have said in our written submissions, that appears to be perilously close to saying:  unless you take the whole of the rival trader’s well‑known brand when you incorporate it in your brand, you are free to do so.  That is the way the respondent defends this paragraph in its written submissions.

Now, there is no such rule of law.  We have given you some of the cases where taking part of the whole can be passing off or ACL.  It should be an obvious enough proposition.  What you do is you look at the whole of the conduct on both sides and you decide whether taking that part and incorporating it into yours is going to create the meaning of association or affiliation where it does not exist.  So, that was no basis to interfere with the primary judge.  That appears to go down to the end of 79.  Now, 80 is curious, because it starts by saying:

We accept that BBNT’s mark is not purely descriptive.  As the primary judge noted, the appellant does not sell beds, baths or tables.  That said, the name is partly descriptive in that it conveys that the products on sale in the stores . . . are related in some way to beds, baths and tables.

So, pausing there, absolutely nothing surprising about that, that a well‑known and a powerful trade mark not only is a sign of the origin of the goods but may allusively give some indication of what sort of goods are in the store.  “Tub Happy”, “Cotton Fresh”, “Budget Wise” in Mark Foy’s is exactly that sort of trade mark.  That is what a really, really good trade mark often does.

No doubt, there is a continuum.  One may have a trade mark at one end which is a pure fancy word – Kodak.  One may have brands which remain purely descriptive – for instance, Sydney Building Information Centre and Hornsby Building Information Centre.  What the appellant had, as the primary judge found and the Full Court here is accepting, is a trade mark that serves as a brand and is not purely descriptive, and that is because of the 40 years of use and the allusive way in which the words are used.  So, that is okay down to there.  Then the Full Court says: 

At the relevant date –

the words:

were widely used as categories or navigational descriptions by other sellers of soft homewares –

and then the critical finding is the qualification is recognised:

albeit not in their trading name, as a trade mark, or on any external signage.

So, that is, at this point, fully accepting the primary judge’s findings that not only do we have 40 years of distinctive use but its unique use.  Then, they say, yes, well:

By the relevant date –

some people were using it inside the stores, and that is simply by the by, because that is not how the unique reputation has been built.  Then, at 81 – and this is the Court narrowing the frame back to the trade mark analysis:

For a consumer to be misled into thinking there was some association between BBNT stores operated under the BBNT mark and GRBA stores operated under the House B&B mark, that person would have to either confuse the two marks (i.e., by mistaking one for the other) or, despite recognising the differences between them –

and here they pick up the trade mark differences:

(including the presence of “House” –

in their mark but not our mark:

draw the inference from the presence of –

“bed” and “bath” in both marks:

that there was some association between –

them.  Now, that paragraph, we say, is completely infected by the trade mark approach. 

GORDON J:   But is it not – you ran over it, but the second‑last line says: 

draw the inference from the presence of either “BED BATH” or “BED & BATH” in the two marks –

MR GLEESON:   Yes.

GORDON J:   So, are you putting to us that that is an analysis by reference to the marks without the broader context?

MR GLEESON:   Yes.  Yes, what has happened is you have said ‑ ‑ ‑ 

GORDON J:   Sorry, both broader and immediate?

MR GLEESON:   Broader and immediate, yes, and has done it to both sides’ marks.  It is said, in effect, our mark, which is a composite mark, “Bed Bath ‘N’ Table”, that is what draws people in ‑ ‑ ‑

GORDON J:   So, that is the third error.

MR GLEESON:   That is the third error.  So the consumer – here is the trade mark consumer who has filleted our mark, it has taken “Bed” and “Bath” out of our mark, and then it has looked at “Bed & Bath” in their mark, and says:  does that give me an association?

GAGELER CJ:   Mr Gleeson, precisely how do you define the conduct for the purposes of the ACL claim?

MR GLEESON:   Yes.  So, the conduct is at least what her Honour identified at paragraph 504, but we would say that the conduct also includes what is in paragraph 510.

GORDON J:   Back at paragraphs 9 and 10 on page 15, it says that the allegation is:

that by launching House B&B –

they did certain things.

MR GLEESON:   Yes.

GORDON J:   And then 10 says the infringing conduct occurred when it opened its first store trading under the logo.

MR GLEESON:   Yes.  So, that is all part of the conduct, and her Honour really has, in the ultimate declaration, which may also be a way of answering the question – in the declaration at page 147, it is the use of the House B&B mark:

including in the form . . . as the name of –

the store:

(including on the external signage over the entrance to those stores –

plus all those other matters, that is the conduct ‑ ‑ ‑

BEECH-JONES J:   I missed that again, Mr Gleeson, I am sorry.  What page was that, again?

MR GLEESON:   Page 147.

BEECH-JONES J:   Is the composition – is the, quote, “Hamptons” style get‑up part of the conduct or the context?

MR GLEESON:   It is part of the context at least.  It does not appear expressly in her Honour’s declaration, but her Honour has treated it as part of the context and the reasons for the overall conclusion at paragraph 515 to 517, and that is in the context where they have moved into this domain, they have never had this before, this is something seen typically in the soft homewares domain, and then, lo and behold, a substantial part of our name is incorporated into their name.  Your Honour, I hope that answers that question.

GAGELER CJ:   Thank you.

MR GLEESON:   I was up to paragraph 82.  Having identified two possibilities, each which appears to have trade mark limitations:

As to the first possibility, we regard the differences between the two marks as substantial and obvious to anyone but the most careless observer.

That looks like a trade mark deceptive similarity – it is the difference between marks.  The second sentence makes it worse:

The fact that the BBNT mark is very well‑known has little, if any, bearing on that matter.

So, again, the Court seems to be saying you start with your trade mark conclusion and the reputation, which is central to the ACL case, can say nothing about the trade mark case.  And then the conclusion to that paragraph is the ordinary consumer is:

unlikely to confuse the two marks –

JAGOT J:   Is that sentence:

In our opinion –

is that the answer to the second alternative in 81, or is that somewhere – that seems to be their answer, meaning “confusion” as in confusion that there was some association between the businesses?

MR GLEESON:   We think that is what it is, your Honour.

JAGOT J:   I think it is, because I cannot find as to the second possibility.

MR GLEESON:   Yes.

JAGOT J:   But again, you would say there is a focus on the marks.

MR GLEESON:   The marks, not ‑ ‑ ‑ 

JAGOT J:   If that is, I just cannot find another reference, but it may be there.

MR GLEESON:   That is all we could find, your Honour.  So, then there is a reference at 83 to our expert Professor O’Sullivan.  Now, in this case – her Honour decided it without resolving disputes between the experts, her Honour made that clear at paragraph 258.  What her Honour had done is:  at 253, said they agreed upon some things; then at  254 to 257, she set out the two experts; at the end of 257, she partially rejected their expert; and then at 258 said I do not go any further between the experts.

Our case succeeded without direct reliance on experts.  In any event, what is in the last sentence of paragraph 83 – it is, firstly, irrelevant, but secondly, wrong.  Then we come to 84, which is a troublesome paragraph, and it is the final paragraph relevant to ground 1.  Most of 84 is correct, because it is simply accepting the primary judge.

So, it is addressing the primary judge at paragraph 516.  It has not addressed the primary judge at 514, that is, rolling off the tongue, that has not been treated with.  Then, we think, although it is not clear, that 84 is some attempt to address ground 4 of the notice of appeal, on page 155.  The first part starts:

The primary judge said at J [516] that the reasonable consumer would not see the words “bed” and “bath” in the House B&B store name “primarily as category descriptors”.  Her Honour observed that consumers are familiar with those words when used as category descriptors inside stores but not on the outside of stores, except at the entrance to –

our stores.  So, that is the finding of unique use at 516:

It is that “bed” and “bath” are not used purely as category descriptors in the House B&B mark.  This is because they form part of a trade mark and function when placed next to the word “House” as a trade mark.

So, at that point, they have agreed with the primary judge:  they rejected their case at paragraph 11 that they are used purely as category descriptors; they have agreed that they are used as a trade mark – and just to cross‑refer, that appears to be agreeing with the primary judge at 399 to 405:

But that does not mean that the ordinary consumer would not also understand “BED & BATH” to be describing the nature of products on sale in the store.

No difficulty with that.  A powerful trade mark would not only indicate a source or function but may, in some cases, tell you something about what is on sale in the store.  So, down to there, 84 really has simply agreed with the primary judge.  Then the problems emerge:

The fact that those words had not previously been used as part of a brand name or on the outside of a store except by –

the appellant:

does not make it likely that the ordinary and reasonable consumer would think that no other trader could do so without being associated in some way with BBNT.

One begs to ask why.  How can one collapse the entire inquiry into immediate and broader context into that conclusory statement:

In any event, even if ordinary reasonable consumers associate the words –

with the appellant:

we do not think they would be misled into thinking that the two businesses are associated given the significant differences between the two names.

So, that appears to be the trade mark prism has reemerged and descended upon the ACL passing off analysis, so that is an error.  Then the last sentence is, with respect, worse, because it says:

The ordinary and reasonable consumer would do no more than infer that both businesses were engaged in the supply of soft homewares for bedrooms and bathrooms.

So, what that has done, it would seem, without going through the ACL analysis, is denude our mark of its reputation and use, because the consumer just thinks that the words “Bed” and “Bath” say:  I will find some products for the bed and the bath inside the store, as opposed to what the consumer thinks after the 40 years of use:  Bed Bath ‘N’ Table tells me I am getting the products – which may be for the bed, bath or table – from the people I have come to know and love over those 40 years of providing me with high quality goods.

BEECH‑JONES J:   So, do you say that is inconsistent with the rejection of them not being category descriptors?

MR GLEESON:   Yes, it is inconsistent with that.  And in a trial where, if you compare the primary judge at paragraph 69 ‑ ‑ ‑

JAGOT J:   Paragraph 69?

MR GLEESON:   Paragraph 69.   The one thing both sides agreed upon was that we had “a substantial and independent reputation” in our mark in the soft homewares sector, and they had a substantial reputation in their mark in the hard homewares sector.  You cannot sideswipe that common ground by reducing our mark to having a solely descriptive function.

And then it has the same error for their mark, because what it has denuded is the full analysis, which says House Bed & Bath tells me I am going to get products in a context where I have always associated “Bed” and “Bath” as a brand, as a store name, with the Bed Bath ‘N’ Table people.  Your Honours, is it convenient if I move to ground 2?

GAGELER CJ:   Yes.

MR GLEESON:   So, there is an aspect of law in ground 2 and then there is an application question.

EDELMAN J:   Ground 2 is wholly independent of ground 1, is it not?

MR GLEESON:   It is wholly ‑ ‑ ‑ 

EDELMAN J:   If you win on ground 1, ground 2 does not add anything to it.

MR GLEESON:   If we win on ground 1.

EDELMAN J:   Yes.

MR GLEESON:   If we do win on ground 2, it only – yes, they are independent, but it only strengthens the overall result.  So, if the Court starts with the Australian Woollen Mills Case 58 CLR 641, which seems to get cited in every case in this area, for different reasons, but your Honours know it rather well. It is in volume 3, tab 7.

The classic statement of the principle is in the judgment of Justices Dixon and McTiernan, although Justice Evatt, who dissented in the application of the principle, also made some remarks upon it.  If I could go first to the statement of principle, which is on page 657, the judgment starts by saying:

the examination made of the respondent’s motives and good faith seems to us to leave the question of infringement and passing off very much in the same position as it stood in without it.

Now, that is because in the findings of fact made over the previous pages the majority judgment accepted, in effect, that it was an innocent selection of the mark that was said to be deceptive.  You see the conclusion of that at the bottom of 656.  So, it is a case where, in the end, the principle was not applied.  But the judgment says:

The 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, no doubt, is as just in principle as it is wholesome in tendency.

The reason given for the rule is that, if the inference is available it:

provides a reliable and expert opinion –

as to whether what has been done is:

likely to deceive.

GAGELER CJ:   Is it really a presumption, or is it just an inference?

MR GLEESON:   It is an evidentiary inference.  It is at that low level.  But the way it works is this – we would say the elements are these.  The first element is:  do you find that there is borrowing, in the sense of deliberate copying or appropriation, of part or all of someone else’s name?  If there is no borrowing, if you have independently come up with something that is very similar, then the evidentiary inference does not arise.

GORDON J:   Can I ask you about that first element and standard you just propounded.  Deliberate copying – do I need any more than that?

MR GLEESON:   Not to get it going.  You are looking at – it is sort of a causation question:  is that where I got it from?

GORDON J:   Source.

MR GLEESON:   Source – simply source.  If you have established source, then the next step is:  is it a reasonable inference that the reason you sourced it there is that you perceived a market benefit in the form of attraction of custom that would otherwise go to the source trader?  And that is how it is put by the Full Court in the Sydneywide decision that her Honour cites at paragraph 512.  That is the second step.  In that event, the inference is at least available.  Then the third step is whether the defendant has produced a satisfactory explanation to rebut that inference.

BEECH-JONES J:   Mr Gleeson, this is an evidentiary rule.

MR GLEESON:   Yes.

BEECH-JONES J:   Is it an admission, is that what we are really talking about?

MR GLEESON:   I am not sure it is being described that way in these cases.  It is one way of viewing it.  It has been described as a reliable expert opinion as to the likely effect of the conduct, but ‑ ‑ ‑ 

BEECH-JONES J:   It is clearly not expert evidence, though, for the purposes of that.

MR GLEESON:   So, perhaps that expression by Justices Dixon and McTiernan is a way of describing what is really:  if you are the trader, if you have sourced part of your mark or all of your mark from someone else, you can infer there is a reason you did it, which is you saw a benefit in it.  Potentially, you saw the benefit is:  I will thereby get custom that might have otherwise gone to them.

The question then is:  what does the impugned trader, if anything, come forward to say is my explanation?  And so, Woollen Mills is in fact a classic example of that, because there is a detailed discussion of the evidence where the defendant said, I sourced it differently, and ‑ ‑ ‑ 

GORDON J:   In Sydneywide, Justices Weinberg and Dowsett at paragraph 117 put it in terms:

where a trader, having knowledge of a particular market, borrows aspects of a competitor’s get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing . . . an available inference . . . that the trader, with knowledge of the market, considered that such borrowing was “fitted for the purpose and therefore likely to deceive or confuse”.

MR GLEESON:   Yes.

GORDON J:   That is it.

MR GLEESON:   That is it.

GORDON J:   And then the question then is:  what is the answer?

MR GLEESON:   What is the answer?

GORDON J:   But you have to establish those matters of fact.

MR GLEESON:   Yes.  And so, at the level of fact, we have to show a borrowing.  If there is a borrowing, then the inference was potentially available.  They came forward and gave an explanation, which is that this was not a borrowing, they did it for the reason in paragraph 11, that they believed they were simply describing what you found inside the store.

Her Honour rejected that evidence and in rejecting it said:  I will not go to the ultimate extreme of knowledge which is you, Mr Lew, actually intended to deceive customers, I will not go quite that far, what I will go is as far as saying you shut your eyes to that being the obvious outcome of what you were doing.  And then we are left with the point that a person does not shut their eyes to an obvious risk before them when they are an experienced trader except for a reason.  The reason is they fear that if they open their eyes, what they will see is what is in front of them.

EDELMAN J:   There is a bit of tension.  I mean, even with actual knowledge, there is a bit of a tension between using subjective purpose as a means to draw an inference of objective effect.

MR GLEESON:   Yes.

EDELMAN J:   It may be that the reference to expert opinion is because if it is using that subjective purpose it, in effect, is a survey of one, but a survey of one very, very closely related player in the market.

MR GLEESON:   Whose opinion is likely to be valuable.

BEECH-JONES J:   That is why I was asking about admission, because the weight to the admission may vary depending upon the expertise of the person who has done the appropriating.

MR GLEESON:   Exactly.  So, in this case, you have – it is a weighty admission, because you have got the person, who is one of the most experienced traders in this market, who spends the entire time studying the behaviour of the players in the market, and that person chooses to shut their eyes to the obvious risk that is in front of them.

Why do they do that, why do they shut their eyes?  The only reason you shut your eyes is you do not want to know that this is likely to deceive.  And so, her Honour’s chain of reasoning is, if that is what you have done, then I can use that to bolster what is otherwise my conclusion.

GAGELER CJ:   You used the word or the language earlier of deliberate copying or deliberate borrowing.  Do you have a finding to that effect?

MR GLEESON:   Yes, I think we do.  So, that is what her Honour addressed, really, commencing around paragraph 132, so the original plan was – this is at paragraph 143 – was up until 3 May they were going to be “MyHouse” stores.  At the last minute, they considered the idea that they will use the “HOUSE” brand.  And then we have got the email at 146, which in part says, well, these would be some benefits from using the House brand, and then says:

Will have Bed bath and table running scared.

And they then consider the three options.  Ms McGann seems to be proposing the first option, that is the one that we say has used the substantial part of our name.  Paragraph 148 refers to Lew’s evidence, which was rejected, that he said:

“the words bed and bath are –

merely:

common descriptors –

Paragraph 151 is important, because they then looked at 12 different concepts to implement the suggestion, and they chose the one in upper case.  So, with knowledge of our mark being used in upper case, they settled not just on our order of words but on the upper case typical with us.  Then there is the email at 154 her Honour found to be significant, which was there was a question whether to:

CHECK WITH LEGAL?

about:

HOUSE Bed & Bath –

At 155, Ms McGann gave an explanation, which was completely rejected at 156, it was a false:

invention to avoid conceding –

there was a “concern” about using it as a mark.  At 159 is evidence Ms McGann was closely watching what Bed Bath ‘N’ Table were doing.  Paragraph 160 is important because Headstart, the advisor, told them they were not providing advice on infringement of common law rights, so that is part of the shutting of the eyes.

Then they apply for the registration at 161, all that has happened within six days, and one can see in the registration they seek, they have, as we would put it, copied not just our words but the block capitals, and then they put the signage up.  So, all that has happened, and then 166, which her Honour found to be important, was when the first letter of demand was sent to them, they made:

no mention of the concept of “bed” and “bath” being category descriptors –

which became the ultimate defence.  Then Lew’s evidence is looked at in some detail:  paragraph 171 is his knowledge of us as the “leading competitor” in soft homewares; at 172, is he is aware of our unique use; paragraph 175 I have taken you to; and 180, his evidence is:

that it never crossed his mind that there –

could be a problem; at 185, absence of any document to confirm their position; at 187, it was “extraordinary” that he did not have awareness of us:

firmly in mind when selecting the words –

and in effect, part of the reason for the credit finding was that they deliberately falsely minimised the significance of us to them in their affidavits, and that was exposed in the cross-examination.

Ms McGann, she performed even worse, as you will see through to 217.  But the core findings then, when all that is brought together, are at 234 to 242.  I think, your Honour the Chief Justice, my most direct answer to the question is at 234 and 237.  Paragraph 234 is:

wilful blindness as to the prospect of confusion arising from the adoption of a name that appropriated two words from one of its largest . . . competitor.

At 237, at the end, it:

is even the more damning in circumstances where GRBA was adopting a brand name that appropriated two words from one of its . . . competitors.

GAGELER CJ:   So, we are to read that as implicitly carrying a finding of deliberate appropriation of those words?

MR GLEESON:   Yes, the source.  The source was our brand, not some independent source.  Then, her Honour pulls it together in 242.  Their:

refusals to acknowledge . . . there was any prospect of consumers being –

misled:

was untenable . . . At worst and, in my view, more plausibly, Mr Lew was wilfully blind to the similarities between the name and logo of House B&B and GRBA’s key competitor BBNT as he perceived that there was a commercial benefit in using part of a well‑known brand name in the new soft homewares store, a name that, in Mr Lew’s words, “rolls off the tongue”.

So, that is the third place.  So, it is 234, 237 and 242 we say is the finding of source.  He perceived a commercial benefit in using part of our well‑known brand name in the new soft homeware store, a name which “rolls off the tongue”, without regard for potential for confusion.  Is that a convenient time, your Honours?

GAGELER CJ:   Yes, it is.  We will take the morning adjournment.

AT 11.21 AM SHORT ADJOURNMENT

UPON RESUMING AT 11.36 AM:

GAGELER CJ:   Mr Gleeson.

MR GLEESON: Your Honours, just to complete the references to the primary judgement on this topic, at paragraphs 469 to 471, in the context of the defence under the Trade Marks Act, her Honour returned to the question of the state of mind of Mr Lew.

Paragraph 470 is interesting because, in citing some comments of Justice Allsop in Anheuser‑Busch, her Honour made clear that what she was not doing was making a finding of conscious dishonesty, but she was making a finding of shutting one’s eyes to the risk that was clearly before Mr Lew.  We submit that the inference we are here speaking of does not require conscious dishonesty.  It may often be accompanied by that, but that is not an essential element for the inference to arise.  The essential elements are the ones identified.

Finally, at paragraphs 512 to 514 is where her Honour does draw the inference.  The inference she is drawing, based on Sydneywide, is that the borrowing occurred because there was a benefit in attracting:

custom which would have otherwise gone to the competitor.

The:

borrowing was “fitted for the purpose and therefore likely to deceive or confuse”.

And it is really the last sentence of 514 that brings together what her Honour has found, having rejected their explanation.  In the Full Court, this was dealt with in two places, primarily it is paragraphs 86 to 89.

As to 86, we submit that that does not give effect to the finding which the primary judge made and, of course, as I have shown you, there was no challenge to the credit‑based findings and there was no challenge to the finding of wilful blindness.  So, really what is in 86 to 88 has not denied the essential elements I have identified of borrowing or copying giving rise to the inference, which was not rebutted. 

The second place is in the notice of contention between paragraphs 102 and 108.  This issue is not before you today.  We have not sought to re‑agitate that her Honour should have gone further and found a positive intention to mislead.  So, the fact that the Full Court did not go that further step is neither here nor there, but it is interesting when you look at paragraph 107.

MR GLEESON:   I am at tab 20, page 49,054 of the ATPR.

JAGOT J:   Page 49,054, thank you.

MR GLEESON:   The first column at the bottom.  Proposition 7 of the primary judge:

his Honour did not think that

“… the difficulty, which has been judicially observed, of finding that a descriptive word has become distinctive of one trader’s product exists in this case.  The collocation of the two adjectives has effected their transformation, on the packaging of the applicant’s article, and in other advertising contexts, to a single name, of the article which the applicant markets.”

That is what has happened when, over 40 years, the collocation of “bed”, “bath” and “table”, three nouns, has effected a transformation when used with stores of this character into the single name with the distinctive qualities we have identified.

Just so your Honours have it, what we have given you at tab 21 is the unreported version of the judgment, that is because that is where you will find the full context of what Justice Jenkinson had said at first instance, and at pages 4 and 5 of the unreported judgment, you will see where Justice Jenkinson found, particularly at the top of page 5 – page 438 of the book – that what had in effect occurred was that a new proper name had been generated through the transformation and collocation of the individual words.  That is what we submit happened with Bed Bath ‘N’ Table.

And so, for a rival trader to be the first and only other person in the market to strip out from the proper name a substantial part of it and attach it to its name is what is likely to create the deception of association.

May it please the Court.

GAGELER CJ:   Thank you, Mr Gleeson.  The Court will consider its decision in this matter and will adjourn until 10.00 am tomorrow.

AT 3.51 PM THE MATTER WAS ADJOURNED