Trade mark and intellectual property disputes can arise long after a business adopts a brand, launches a product or begins working with a designer or manufacturer. For that reason, businesses should treat IP protection as an early commercial and legal issue, not something to be addressed only after a dispute has arisen.
Recent decisions of the Federal Court, Full Federal Court and High Court provide useful guidance on similar branding, confidential product designs and the limits of the “honest concurrent use” defence.
What Should Businesses Check Before Adopting or Enforcing a Brand?
If your business is adopting, protecting or enforcing intellectual property rights, key considerations are:
- whether the brand is available for use and registration in Australia;
- whether the way the brand is presented creates a risk of trade mark infringement or consumer confusion;
- whether ownership and permitted use of designs, drawings and other intellectual property has been properly documented; and
- whether there is sufficient evidence to support a claim or defence if a dispute arises.
Care A2 Plus v a2 Milk: Can a Scientific Term Be a Trade Mark?
Background to the Care A2 Plus Dispute
In Care A2 Plus Pty Ltd v The a2 Milk Company Limited (No 2) 2026 FCA 475, the Federal Court found that Care A2 Plus Pty Ltd had infringed trade marks held by the a2 Milk Company. The Court also found that Care A2 had engaged in misleading or deceptive conduct and made false or misleading representations.
Was “A2” Too Descriptive to Be a Trade Mark?
The dispute concerned the use of “A2”, “A2+” and “Care A2+” branding by Care A2 in connection with infant formula and related products.
In February 2023, a2 Milk brought proceedings against Care A2, alleging breach of its registered trade marks, and misleading and deceptive conduct under the Australian Consumer Law.
Was “A2” Too Descriptive to Be a Trade Mark?
Care A2 responded by challenging the validity of a2 Milk’s registrations, arguing that the term “A2” is descriptive or generic because it refers to milk containing only the A2 beta-casein protein, and the term is therefore not capable of distinguishing a2 Milk’s products. Under section 41 of the Trade Marks Act 1995, a trade mark may be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services.
The Court did not accept Care A2’s argument. It found that “a2/A2”, when used without the words “beta-casein protein”, was not simply a scientific or ordinary descriptive expression in the minds of ordinary consumers, and had acquired such a strong brand distinctiveness that it functioned as a badge of origin indicating products of a2 Milk.
How Care A2’s Branding Infringed the A2 Milk Trade Marks
The way the branding was used was central to the question of infringement. The Court found that Care A2’s products displayed “A2” and “A2+” prominently as separate marks, rather than merely forming part of the composite “Care A2+” brand. The Court found that “A2+” was deceptively similar to registered a2 Milk marks, and that this similarity was likely to lead consumers to believe that Care A2’s products were connected with, associated with or approved by a2 Milk. The Court went ever further than this, finding that the infringement was flagrant, and awarding additional damages.
What the Care A2 Decision Means for Brand Owners
This case is significant as it found that descriptiveness is judged by the ordinary consumer, and descriptive use in scientific journals did not reflect the understanding of the relevant consumer.
Further, businesses should not assume that adding a house brand, logo or another word will avoid infringement. The overall presentation, prominence and commercial context of the branding all matter.
Taylor v Killer Queen (Katie Perry): Does Fame Extend to Every Market?
In Taylor v Killer Queen LLC 2026 HCA 5, the High Court allowed the appeal of Sydney fashion designer Katie Jane Taylor (born Katie Jane Perrie) by a 3:2 majority and set aside the Full Federal Court’s order cancelling her KATIE PERRY registration for clothing in class 25.
Background to the Katie Perry Trade Mark Dispute
In September 2008, the Designer became the registered owned of the trade mark “Katie Perry” in clause 25. In November 2011, the singer Katy Perry (born Katheryn Hudson) registered the trade mark “Katy Perry” in class 9 “recording disks” and class 41 “entertainment.”
The Designer commenced proceedings claiming that the singer had infringed her trade mark by using the name on clothing and merchandise in her 2014 tour. In response, the singer sought cancellation of the trade mark held by the Designer, on the basis that her mark had acquired a reputation in Australia before the priority date of the designer’s registration. The primary judge found in favour of the Designer.
On appeal, the Full Court overturned those findings and ordered the cancelled of the designer’s trade mark.
Why the High Court Restored the KATIE PERRY Trade Mark
The High Court held that that the Full Court erred in that ruling, and found that reputation attaches to the goods or services for which a mark has actually been used. The singer was undoubtedly famous in Australia by September 2008, but that fame was in music and entertainment, not clothing, and almost no Katy Perry branded clothing had been sold in Australia before the priority date. The common practice of performers selling merchandise or launching clothing labels could not, of itself, give the mark a reputation in relation to clothing. Fame in one field is not trade mark reputation in every field.
The absence of any evidence of actual confusion over roughly a decade of co-existence was treated as compelling. The danger of confusion was possible, but not real or tangible. Steward J added that a party should not be able to rely on confusion generated by its own persistent infringement as a basis for cancelling the other party’s registration.
The decision has now been returned to the Full Court to determine what remedies the designed should be entitled to.
What the Katie Perry Decision Means for Brand Extensions
For businesses, the case is a reminder to register in every class the brand is likely to be used in, before entering that market, and to build and document use in those categories. Reputation in a core product will not automatically carry across to a brand extension.
Zip Co v Firstmac: When Is Honest Concurrent Use a Defence?
In Zip Co Limited v Firstmac Limited 2026 HCA 16, the High Court unanimously dismissed Zip Co’s appeal and confirmed that the honest concurrent use defence must be assessed at the time of each alleged infringement.
Background to the Zip Co Trade Mark Dispute
The dispute concerned Firstmac’s registered ZIP trade mark, registered in 2004 for “financial affairs” in class 36. From November 2013, Zip Co and Zipmoney began using ZIP-related marks in connection with consumer credit products, including the “Zip Money” and later “Zip Pay” services. The High Court found that the ZIP marks used by the Zip companies were substantially identical with, or deceptively similar to, Firstmac’s registered mark.
Before launching, the Zip companies conducted internet searches but did not search the Trademarks Register or obtain legal advice. After IP Australia’s October 2013 adverse examination reports identified Firstmac’s earlier ZIP registration and the similarity of the marks and services, the Zip companies nevertheless began using ZIP-related marks in November 2013. When Firstmac later brought infringement proceedings, Zip Co relied on the honest concurrent use defence under sections 122(1)(f) and 122(1)(fa), read with section 44(3), of the Trade Marks Act 1995 (Cth), which can permit use where the Court considers the alleged infringer would be entitled to register its mark, including on the basis of honest concurrent use.
When Is Honest Concurrent Use Assessed?
The defence is not assessed only when proceedings begin, at trial or only by reference to a business’s initial adoption of a mark. The relevant question is whether the use was honest at the time of each alleged infringing act.
The High Court confirmed that this defence must be assessed at the time of each alleged act of infringement. It is not enough that a business adopted a mark without knowledge of an earlier registration, or that circumstances later changed by the time proceedings were commenced or heard. The party relying on the defence must positively establish an honest state of mind at the relevant time, assessed against the standards of ordinary people. On the facts, the Zip companies did not establish that their use was honest from the first potential infringement in November 2013. The High Court therefore upheld the Full Federal Court’s conclusion that the honest concurrent use defence was unavailable.
What the Zip Co Decision Means for Businesses Launching a Brand
Businesses should preserve records showing why a brand was selected, what trade mark searches were conducted, what legal advice was obtained and what decision-makers knew about earlier marks. Honest concurrent use is narrow and evidence-dependent; it is not a substitute for proper pre-launch trade mark clearance.
How KPA Lawyers Can Help Protect Your Brand and IP
KPA Lawyers can assist businesses with trade mark registration copyright and design ownership arrangements, confidentiality provisions and intellectual-property clauses in commercial agreements.
We can also assist where a business is concerned about trade mark infringement, misleading or deceptive conduct, misuse of confidential information or ownership of product designs.
