The Registrar has the discretionary power to revoke a registration within twelve months of its entry on the Register. The Federal Court’s decision in National Cancer Foundation Ltd v Registrar of Trade Marks [2025] FCA 711 shows exactly how section 84A of the Trade Marks Act 1995 (Cth) is to be handled. This case clarifies when a mark “should not have been registered” and what makes revocation “reasonable,” especially in situations where different views arise within IP Australia about whether a trade mark is deceptively similar to another.
Here, McEvoy J allowed the appeal brought by the National Cancer Foundation, reinstating its registration for BROWN NOSE DAY after the Registrar had revoked it on the ground that it was deceptively similar to Red Nose Limited’s well-known RED NOSE DAY family of marks. The judgment is a significant reminder that revocation is an exceptional administrative remedy, i.e. not a vehicle for revisiting reasonable differences of opinion about trade mark similarity.
Background of the case
The National Cancer Foundation, a charity raising funds for cancer awareness, launched a campaign built around the theme “Brown Nose Day” to promote bowel cancer prevention. The mark, consciously provocative, was filed for registration in May 2020 in respect of “charitable fundraising” services in class 36.
During examination, the examiner considered prior marks owned by Red Nose Limited, including registrations for RED NOSE DAY and a colour-based “Nose Day” series (RED NOSE DAY, WHITE NOSE DAY, BLACK NOSE DAY, BLUE NOSE DAY, YELLOW NOSE DAY, GREEN NOSE DAY). The examiner concluded that BROWN NOSE DAY was sufficiently different and accepted it for registration. No opposition was filed, and the mark was registered on 15 December 2020.
A year later, Red Nose Limited’s solicitors asked the Registrar to revoke the registration under sec 84A, alleging that the examiner had erred in failing to raise an objection under sec 44 of the Act (deceptive similarity). The Deputy Registrar issued a notice proposing revocation and ultimately revoked the registration in February 2023.
National Cancer Foundation appealed, arguing that there was no error in the original examination and that, in any event, it was not reasonable to revoke the mark.
The Issues on Appeal
McEvoy J had to decide two questions central to sec 84A, that is-
- Should the trade mark not have been registered, taking account of the circumstances that existed at the time of registration?
- Was it reasonable to revoke the registration, taking account of all the circumstances?
As because the appeal proceeded as a hearing de novo, the Court reassessed the issues on their merits rather than merely reviewing the Registrar’s decision.
The Statutory Framework and Legislative Purpose
Section 84A gives the Registrar power to revoke a registration where satisfied that it “should not have been registered” and that it is “reasonable to revoke” it. The provision was introduced in 2006 to correct clear administrative errors, such as when a relevant ground of rejection was overlooked.
Both the text and the Explanatory Memorandum emphasize restraint. Revocation is discretionary, i.e. it “may revoke”, and time-limited to 12 months from registration. As the Court noted, once registered, a trade mark becomes statutory property protected by sections 20–22 of the Act, and revocation removes that proprietary right.
That said, citing Re Bobart (2010) 88 IPR 357, McEvoy J reiterated that the Registrar’s power is not a mechanism to reopen competing ownership disputes or to substitute one opinion for another. It should be exercised “with great caution,” only where there is a clear oversight or legal error, not merely a change of view about registrability.
Is the “Should Not Have Been Registered” condition met?
The Registrar argued that BROWN NOSE DAY was deceptively similar to Red Nose Limited’s RED NOSE DAY and related marks, relying on the idea that colour-based NOSE DAY combinations formed a distinctive family. Consumers, the Registrar said, might assume BROWN NOSE DAY was another event from the same organization.
The National Cancer Foundation countered that “BROWN NOSE” carried a strong and distinctive colloquial meaning (a sycophant), visually and conceptually separating it from the RED NOSE DAY brand. It also emphasized that colour differentiation is an established feature of charitable campaigns, such as White Ribbon Day or Daffodil Day, and that donors are sophisticated, deliberate decision-makers unlikely to confuse unrelated causes.
The Court’s decision on Deceptive Similarity
McEvoy J grounded his analysis in the principles reaffirmed by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186 (link to judgment summary by LexGeneris). The test for deceptive similarity focuses on the impression formed by the notional buyer with imperfect recollection of the registered mark, considering the marks as whole and disregarding extraneous get-up or reputation.
Applying that test, the Court held that BROWN NOSE DAY was not deceptively similar to RED NOSE DAY or any of the other Red Nose Limited marks.
Three points were decisive for the court-
i. The distinctiveness of the word “Brown.”
“Brown” appears first and functions as the dominant differentiator, both visually and aurally. The Court accepted expert evidence that colour words strongly influence consumer perception and that Australians are accustomed to associating different colours with separate charitable campaigns.
ii. The established colloquial meaning of “Brown Nose.”
The phrase “Brown Nose” has an entrenched English meaning unrelated to charity or colour symbolism. McEvoy J accepted that this meaning gives the mark an entirely different conceptual identity from Red Nose Day, which is commonly associated with humor and clowns. This semantic contrast diminished any real risk of confusion.
iii. The descriptive function of “Day.”
The Court recognized that many charity events use “Day,” “Week,” or “Month” as temporal markers. That structure, i.e. the colour + object + time period, is so common that consumers are adept at distinguishing between campaigns based on the first element. Accordingly, “Day” carried little distinctive weight in the comparison.
The Registrar’s argument about “contextual confusion”, i.e. the mark might appear part of a NOSE DAY family, was rejected as inconsistent with Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023). The High Court has made clear that resemblance between marks must itself cause the likely deception; a “family of marks” theory cannot expand the statutory test under sec 44.
The factor of “Reasonableness of Revocation”
Even if similarity had been arguable, McEvoy J found that revocation was not reasonable in the circumstances.
First, revocation under sec 84A should remain a narrow remedy for clear administrative oversight, not for revisiting an examiner’s evaluative judgment. Here, the original examiner had considered the RED NOSE DAY marks and consciously concluded that the differences were sufficient. The later change of view within IP Australia did not expose an “error”, but only an alternative interpretation. Revocation on that basis was, therefore, inappropriate.
Secondly, while National Cancer Foundation ’s financial investment in the mark was modest, the Court stressed that a registered trade mark is a form of statutory property. Revocation deprives the owner of a proprietary right and should not occur lightly or for reasons short of clear error.
Thirdly, the Court acknowledged procedural concerns. IP Australia’s internal correspondence revealed delays and an absence of reasoning records supporting the initial notice of revocation. Although McEvoy J did not treat these as determinative, they showed why sec 84A must be exercised with rigor and restraint.
That said, finally, the Court emphasized the public interest in certainty. Trade mark owners must be able to rely on the examination process. Allowing revocation simply because internal opinions differ would undermine confidence in the Register and discourage investment in branding.
Thus, the Court found no basis to conclude that BROWN NOSE DAY should not have been registered and held that it was not reasonable to revoke the registration. The appeal was allowed, and the Registrar was ordered to pay National Cancer Foundation ’s costs.
Key Takeaways for Brand Owners and Applicants
- Revocation under sec 84A is an exceptional case. The Registrar’s power to revoke is not a safety net for subjective re-evaluation. It applies only to clear administrative mistakes or overlooked grounds. Once a mark is registered, it enjoys the full protection of statutory property rights, and revocation will be justified only in rare, well-founded cases.
- Differences of opinion are not “errors.” McEvoy J drew a sharp line between genuine oversight and evaluative disagreement. Where examiners apply the correct legal test and reach a defensible conclusion, a later contrary view does not render the registration invalid.
- Colour and context can decisively distinguish marks. The Court’s acceptance that colour words serve as major differentiators, especially in sectors where colour coding is common, i.e. provides reassurance for charities and brand owners using thematic variations.
- Conceptual meaning matters. The colloquial meaning of “Brown Nose” played a key role in distinguishing it from RED NOSE DAY. This reinforces that the semantic impression of a mark, not just its visual form, influences the deception analysis.
- The Register’s integrity depends on restraint. Revocation undermines commercial certainty if used to revisit legitimate decisions. The Court’s emphasis on restraint aligns with the previous precedents set and the legislative intent behind sec 84A, and thus, the Register should be stable and reliable, not revisable at whim.
Conclusion
National Cancer Foundation v Registrar of Trade Marks offers a rare judicial roadmap for understanding sec 84A’s dual thresholds of error and reasonableness. It confirms that the power to revoke is not an open invitation to re-argue close calls on similarity. That said, for brand owners and applicants, the decision shows the security that flows from registration and the importance of contextual, semantic, and consumer-based analysis in assessing risk.
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