Henley Constructions Pty Ltd v Henley Arch Pty Ltd [2023] FCAFC 62

FEDERAL COURT OF AUSTRALIA Henley Constructions Pty Ltd v Henley Arch Pty Ltd [2023] FCAFC 62 Appeal from: Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369

File numbers: VID 737 of 2021 VID 164 of 2022

Judgment of: YATES, ROFE AND MCELWAINE JJ

Date of judgment: 28 April 2023

Catchwords: TRADE MARKS – appeal – where primary judge found that the respondent's registered trade mark HENLEY was valid and infringed by the first appellant – whether primary judge erred in finding that HENLEY was capable of distinguishing the respondent's services under s 41 of the Trade Marks Act 1995 (Cth) (the Trade Marks Act) – where primary judge found that HENLEY was not inherently distinctive – where primary judge found that s 41(6) was satisfied – no error established in finding that s 41(6) was satisfied TRADE MARKS – infringement – substantial identity –whether primary judge erred in finding that HENLEY CONSTRUCTIONS is substantially identical to the respondent's registered composite mark comprising the words HENLEY and PROPERTIES with device elements – error established – appeal allowed in part TRADE MARKS – infringement – deceptive similarity – whether primary judge erred in finding that certain marks used by the first respondent are deceptively similar to the respondent's registered marks – no error established TRADE MARKS – infringement – use as a trade mark – whether primary judge erred in finding that the first appellant had used certain signs as trade marks – whether primary judge failed to have regard to the setting in which each sign was used – no error established TRADE MARKS – infringement – prior use defence – whether primary judge erred in finding that the first appellant had not established a defence under s 124 of the Trade Marks Act – where primary judge found that the respondent's use of the infringed marks HENLEY COLLECTION, HENLEY RESERVE and HENLEY ESSENSE was use of HENLEY based on s 7(1) of the Trade Marks Act – where primary judge found that the first appellant had not used HENLEY CONSTRUCTIONS prior to the respondent's first use of HENLEY – error established – appeal allowed in part CONSUMER LAW – misleading and deceptive conduct – false or misleading representations – whether primary judge erred in finding that the first appellant had contravened the Australian Consumer Law and the Trade Practices Act 1974 (Cth) – whether primary judge erred in finding that the respondent had a relevant reputation – whether primary judge erred in finding that the building and construction industry is a national industry – whether primary judge erred in finding that there to be evidence of consumer confusion – no error established TRADE MARKS – relief – whether primary judge erred in directing the question of an account of profits be determined separately after all other relief – where trial set down on all issues – no error established TRADE MARKS – cross appeal – whether primary judge erred in finding that the first appellant's use of 1300HENLEY was not use as a trade mark – error established – cross-appeal allowed COSTS – application for leave to appeal from costs judgment of primary judge – offer of compromise under r 25.14(3) of the Federal Court Rules 2011 (Cth) – where primary judge ordered that the appellants pay the respondent's costs on an indemnity basis – whether primary judge erred in finding that the respondent obtained a judgment more favourable than its offer of compromise – application for leave to appeal dismissed