FEDERAL COURT OF AUSTRALIA Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4) [2016] FCA 138 File numbers: SAD 224 of 2012 WAD 167 of 2013 Judge: MCKERRACHER J Date of judgment: 24 February 2016 Catchwords: INTELLECTUAL PROPERTY – trade marks – application for removal of trade marks for non-use successful under s 92 of the Trade Marks Act 1995 (Cth) (Act) – whether allegation of non-use rebutted by the production of evidence of use in good faith during relevant period – whether abandonment of trade marks during rebranding – exercise of discretion under s 101(3) of the Act – whether affected by repudiation of agreement – whether trade mark used by award of medal – whether trade mark used by listing in the telephone book INTELLECTUAL PROPERTY – trade marks – whether infringement of trade mark under s 120(1) of the Act – whether breach of franchise agreement leads to conclusion that application for registration of trade mark is 'contrary to law' under s 42 of the Act – determining the owner of trade mark in connection with finding under s 58 of the Act – whether registration of trade mark was 'likely to deceive or cause confusion' under s 60 of the Act – whether trade mark was accepted for registration on the basis of evidence of representations that were false in material particulars under s 62(b) of the Act – whether application for registration of trade mark was made in bad faith under s 62A of the Act – whether use of trade marks constitutes passing off – whether use of trade marks constitutes misleading and deceptive conduct in breach of s 18 of the Australian Consumer Law – whether time limitation precludes the claim – whether trade marks should be removed or cancelled pursuant to s 88(1) of the Act Legislation: Trade Marks Act 1995 (Cth) ss 10, 17, 42, 44(2), 58, 60, 88(1), 92(4), 94, 100(3)(a), 101(3), 120, 122, 127, 190 Federal Court Rules 2011 (Cth) r 16.5 Cases cited: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554 Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH (2001) 190 ALR 185 Re Application by Eltham Woodwind (Importing) Pty Ltd (1996) 34 IPR 668 Anheuser-Busch, Inc v Budějovický Budvar [2002] FCA 390 Aston v Harlee Manufacturing Co (1960) 103 CLR 391 C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561 C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 Cadbury Schweppes Pty Ltd v Wal-Mart Stores, Inc (2004) 61 IPR 596 CSR Ltd v Resource Capital Australia Pty Ltd (2003) 128 FCR 408 E. & J. Gallo Winery v Lion Nathan Australia Pty Limited (2010) 241 CLR 144 Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd [2012] FCA 281 Re Hicks Trade Mark (1897) 22 VLR 636 Holland v Wiltshire (1954) 90 CLR 409 King Par LLC v Brosnan Golf Pty Ltd [2014] FCA 795 Kowa Company Ltd v N V Organon (2005) 223 ALR 27 Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd (2014) 311 ALR 207 Maier v ASOS Plc [2015] EWCA Civ 220 Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 Marcus v Sabra International Pty Ltd [1995] FCA 35 Matzka v The Mind Gym Ltd (2006) 68 IPR 339 Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 166 FCR 312 Neumann v Sons of the Desert SL [2008] FCA 1183 New South Wales Lotteries Commission v Novamedia BV (2001) 52 IPR 638 Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd (2011) 91 IPR 416 Sargent v ASL Developments Ltd (1974) 131 CLR 634 Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corporation (1987) 8 IPR 285 Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544 Southern Cross Autoglass Pty Ltd v Protector Glass Industries Pty Ltd [2014] NSWSC 261 Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 Two Men and a Truck Australia Pty Ltd v Three Men and a Truck Removals and Storage Pty Ltd [2008] FMCA 1333 VIP Australia Pty Ltd v Bates (1998) 43 IPR 209 Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97 Date of hearing: 13-17 October 2014 Registry: Western Australia Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 312 Counsel for the Applicant/Cross-Respondent: Mr T Duggan SC with Mr P Britten-Jones Solicitor for the Applicant/Cross-Respondent: Thomson Geer Counsel for the Respondent/Cross-Claimant: Mr A Musgrave Solicitor for the Respondent/ Cross-Claimant: Elevation Legal ORDERS SAD 224 of 2012 BETWEEN: HARCOURTS WA PTY LTD ACN 009 120 227 Applicant/Cross-Respondent AND: ROY WESTON NOMINEES PTY LTD ACN 073 213 920 Respondent/Cross-Claimant JUDGE: MCKERRACHER J DATE OF ORDER: 24 FEBRUARY 2016 1. The parties file a consent minute as to orders and other relief reflecting these reasons within 21 days. 2. Absent agreement as to such orders: (a) within 28 days the applicant/cross-respondent file a minute as to the appropriate relief to reflect these reasons, supported by submissions. (b) within 10 days thereof the respondent/cross-claimant file corresponding material in response. (c) within 7 days thereof the applicant/cross-respondent file any reply material. (d) a directions hearing to address resolution of remaining issues as to relief, if any, be listed within two months. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. ORDERS WAD 167 of 2013 BETWEEN: ROY WESTON NOMINEES PTY LTD ACN 073 213 920 Applicant/Cross-Respondent AND: HARCOURTS WA PTY LTD ACN 009 120 227 Respondent/Cross-Claimant JUDGE: MCKERRACHER J DATE OF ORDER: 24 FEBRUARY 2016 1. The parties file a consent minute as to orders and other relief reflecting these reasons within 21 days. 2. Absent agreement as to such orders: (a) within 28 days the respondent/cross-claimant file a minute as to the appropriate relief to reflect these reasons, supported by submissions. (b) within 10 days thereof the applicant/cross-respondent file corresponding material in response. (c) within 7 days thereof the respondent/cross-claimant file any reply material. (d) a directions hearing to address resolution of remaining issues as to relief, if any, be listed within two months. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT MCKERRACHER J: 1 THE DISPUTE [1] 2 KEY BACKGROUND FACTS [9] 3 THE CENTRAL ISSUES [45] 4 KEY STATUTORY PROVISIONS [50] 5 EVIDENCE FROM KEY WITNESSES ON THE CENTRAL ISSUES [62] 5.1 M/s Musca [64] 5.2 M/s Furse [101] 5.3 Mr Green [106] 5.4 Messrs Honey and Massam [118] 5.5 M/s Birrell [120] 5.6 Mr Moore [125] 5.7 Mr Taylor [127] 5.8 Mr Johnson [154] 5.9 Mr Kempton [172] 5.10 Mr Wellstead [175] 6 CONSIDERATION [176] 6.1 RWN's claim [176] 6.1.1 Removal of the 'Roy Weston' trade mark from the Register [177] 6.1.1.1 Non-use [177] 6.1.1.2 The websites [187] 6.1.1.3 The White pages [201] 6.1.1.4 The Roy Weston Medal [210] 6.1.1.5 Exercise of discretion to determine non-use application [221] 6.1.1.6 Abandonment [225] 6.1.2 Removal of 'The House Sold Word In Real Estate' trade mark from the Register [231] 6.1.3 RWN's cross-claim for removal of Harcourts Trade Marks pursuant to ss 42, 58, 60, 88(2)(c) TMA [232] 6.1.4 Repudiation [239] 6.2 Harcourts WA's claims [253] 6.2.1 Limitation defences [254] 6.2.2 Cancellation of the RWN Trade Marks [261] 6.2.3 'Contrary to law' (s 57 TMA) [263] 6.2.4 Ownership of the RWN Trade Marks (s 58 TMA) [272] 6.2.5 Confusion (s 60 TMA) [275] 6.2.6 Application for the registration of the RWN Trade Marks based on representations false in material particulars (s 62(b) TMA) [277] 6.2.7 Bad faith (s 62A TMA) [284] 6.2.8 Infringement of the Harcourts Trade Marks [287] 6.2.9 Passing off or misleading and deceptive conduct on the part of RWN [291] 6.2.10 Defences raised by RWN [294] 6.2.10.1 Entitlement to use its company name (s 122(1)(a) TMA) [294] 6.2.10.2 Prior use of identical trade marks (s 124 TMA) [304] 6.3 Relief and delay [308] 7 CONCLUSION [309] ANNEXURE a 1. THE DISPUTE 1 In this regrettable litigation the parties are fighting over entitlement to the use of the name 'Roy Weston' in various forms as a trade mark. 'Roy Weston' has been a well-known real estate brand in Western Australia. 2 The position of Roy Weston Nominees Pty Ltd (RWN) is that it lawfully acquired the entitlement to use the name when its shareholders acquired ownership of all of the shares in the company, the title of which incorporates the name. Thereafter it obtained registration of a trade mark incorporating the name. From Harcourts WA Pty Ltd's perspective, it claims entitlement to the intellectual property rights in the 'Roy Weston' name as having acquired all the shares in the company owning the business formerly trading under that name which name it franchised to numerous other real estate agents including RWN. It says further that its primary public persona then changed to Harcourts but it did maintain some trade usage of the name Roy Weston. 3 Demands concerning the respective entitlements of both Harcourts and RWN have been exchanged over a number of years. Regrettably, it appears that the parties are unable to reach a compromise. 4 Harcourts WA (as it is now called) has operated a franchised real estate network in Western Australia since 30 January 1985. It has also operated international networks since 2004. Harcourts is the registered owner of the trade marks 'Roy Weston' (Trade Mark 921651) and 'The House Sold Word in Real Estate' (Trade Mark 921677) (together, the Harcourts Trade Marks). 5 RWN still operates a real estate business in Western Australia and is the registered owner of the trade marks 'Roy Weston Real Estate' (Trade Mark 1336120) and 'Roy Weston Nominees the Trusted Name in Real Estate' (Trade Mark 1154742) (together, the RWN Trade Marks). 6 On 22 July 2011, RWN filed an application pursuant to s 92 of the Trade Marks Act 1995 (Cth) (TMA) with the Registrar of Trade Marks for removal of the Harcourts Trade Marks from the Register by reason of non-use. Application WAD 167 of 2013 in this Court commenced when the Deputy Registrar of Trade Marks referred RWN's application to this Court on 14 March 2013 pursuant to s 94 TMA (the Federal Court of Australia being a 'prescribed court' under s 190(a) TMA (the RWN non-use proceedings). RWN contends in this Court that there is no evidence to demonstrate usage of the Harcourts Trade Marks and, consequently, that each of the Harcourts Trade Marks should be expunged from the Register. 7 A second proceeding, SAD 224 of 2012, was commenced in the South Australia Registry of this Court by Harcourts WA on 6 September 2012. Harcourts WA allege that RWN, which is controlled by Mr and Mrs Taylor (its shareholders and directors), infringed the Harcourts Trade Marks by use of the Harcourts Trade Marks without authority, and by registering the RWN Trade Marks. Harcourts WA also argues the RWN Trade Marks are substantially identical or deceptively similar to the Harcourts Trade Marks. There are numerous other claims including those under s 18 of Sch 2 to the Competition and Consumer Act 2010 (Cth), the Australian Consumer Law (ACL), breach of a franchise agreement and common law claims of passing off. Harcourts WA seeks relief, including rectification of the Register to reflect the cancellation of the RWN Trade Marks and injunctive relief restraining RWN from infringement and passing off. It also seeks declaratory relief, delivery up, damages or an account of profits, damages or equitable compensation for passing off and various other orders. In relation to relief, as I understand the parties accept, I propose to deliver these findings and reasons on liability first, before hearing from the parties in relation to relief, if any, including quantum of loss, if any. 8 RWN contends that the RWN Trade Marks do not infringe the Harcourts Trade Marks. By cross-claim, RWN seeks declarations that Harcourts repudiated a franchisee agreement between the parties, that RWN owns the RWN Trade Marks and that RWN has not infringed the Harcourts Trade Marks. RWN's defence and cross-claim again raise the assertions of non-use and abandonment of the Harcourts Trade Marks by Harcourts. 2. KEY BACKGROUND FACTS 9 The background discussed in this section is mostly common ground. 10 From about 1957, Mr Roy Weston commenced using the trade mark 'Roy Weston' in respect of real estate affairs on his own account and later with various partners in the business of Roy Weston and Co. In 1983, Roy Weston and Co commenced franchising. On 30 January 1985, Roy Weston and Co was incorporated to become 'Roy Weston Limited' to carry on the business of Roy Weston and Co. Roy Weston Limited then became 'Roy Weston Pty Ltd' on 18 June 1999. On 31 January 2004, the holding company of Harcourts WA, Harcourts Group (Australia) Pty Ltd became the owner of Roy Weston Pty Ltd by acquiring 100% of the issued share capital in Roy Weston Pty Ltd. The company name was then changed from Roy Weston Pty Ltd to 'Harcourts WA Pty Ltd' on 27 March 2007. It is in issue whether Harcourts WA has relevantly used the Harcourts Trade Marks since this time. 11 Harcourts WA contend that by acquiring all of the shares in Roy Weston Pty Ltd, in turn, has owned the trade mark 'Roy Weston' since 30 January 1985. It has also provided real estate services, operated a franchised real estate network in Western Australia since incorporation, and operated businesses under or by reference to the Harcourts Trade Marks. 12 Challenge Realty Pty Ltd commenced a real estate business trading as 'Roy Weston Bassendean' in January 1988. The Taylors were the directors and shareholders of Challenge Realty. 13 On 31 January 1996, an agreement was entered into by Challenge Realty to purchase LJ Hooker Morley (a competing real estate firm) from 1 April 1996. Challenge Realty then operated the 'Roy Weston Morley' real estate agency business (Morley Business). There is some controversy as to the mechanics of this exercise. I will deal with that in more detail below. 14 There were three franchise agreements between Roy Weston Limited (now Harcourts WA) and RWN (as franchisee): the first dated 1 April 1996, the second dated 1 May 1997, and the third dated 1 April 1996 between JA Bryce Pty Ltd and Roy Weston Limited (relevantly known as the 2002 Franchise Agreement). 15 LJ Hooker Morley had been operated by JA Bryce Pty Ltd. Mr John Bryce was a director of JA Bryce Pty Ltd and personally became a director of RWN from 8 March 1996 until 1 October 1996 (although this is incidental). RWN did not commence operating the Morley Business until after 1 April 1996 probably because it did not hold the necessary approvals from the Real Estate Business Agents Supervisory Board to do so until after that date. 16 Harcourts WA advanced RWN $230,000 by way of a loan to commence the Morley Business in 1996. The loan was repaid in April the following year. At this time, Mr David Pilling, then Chief Executive Officer (CEO) of Harcourts WA, ceased to be a director of RWN. A Mr Watson, a solicitor, also transferred two shares he held in RWN to Mr and Mrs Taylor. Harcourts, at the same time, also transferred all its shares in RWN (49 shares) to the Taylors. So, from April 2007, RWN was wholly controlled by the Taylors. 17 In the meantime, on 29 July 2002, Harcourts WA filed an application for the trade mark 'Roy Weston' in a class relating to real estate affairs. It obtained trade mark registration with that priority date. 18 On 30 April 2004, Harcourts WA held a 'Roy Weston loyalty recognition dinner' at a restaurant in Western Australia. It registered the domain name 'royweston.com.au' and the business name 'Roy Weston'. The Taylors listed 'Roy Weston Morley' in the Yellow Pages on 15 July 2004. Later, it listed 'Roy Weston' and 'Harcourts' in the 2006/2007, 2007/2008 and 2008/2009 editions of the White Pages telephone book. 19 In or around March 2006, Harcourts WA informed its franchisees that Harcourts intended to rebrand its franchise network from 'Roy Weston' to 'Harcourts'. The change took effect from on or around 2007. The use of 'Roy Weston red' changed to blue – the corporate colour of the Harcourts Group, which is referred to as the change from 'red to blue'. 20 A number of meetings and exchanges occurred between the Roy Weston franchisees and Roy Weston Pty Ltd (as Harcourts WA then was). The meetings and exchanges of import are examined in detail below. 21 At the time of the rebrand, Roy Weston Pty Ltd had agreements with around 50 franchisees. RWN confirmed that it would not continue as a franchisee under the Harcourts' brand in December 2006. In total, around 20 franchisees elected to leave the franchise network of Harcourts WA as a result of the rebrand. 22 On 21 December 2006, Mr Michael Corboy SC, as his Honour then was, provided an opinion in relation to the contractual entitlements of certain Roy Weston franchisees following the Harcourts rebrand. The advice is discussed in further detail below. The advice suggested that the rebranding constituted a repudiation of the 2002 Franchise Agreement. But it did not suggest that RWN (and other franchisees) could therefore use the name 'Roy Weston' as a trade mark. 23 In 2007, Harcourts WA first introduced the 'Roy Weston Medal' on which a deal of evidence was given, particularly by M/s Adrienne Musca, in connection with the ongoing use by Harcourts of the 'Roy Weston' name, as contended for by Harcourts WA. 24 On 9 January 2007, RWN applied for the registration of a word trade mark in the terms 'Roy Weston Nominees the Trusted Name in Real Estate'. There were some important consequential exchanges in early 2007. By letter dated 24 January 2007: … Dear Mr and Mrs Taylor Roy Weston We act for Roy Weston Pty Ltd. We refer to the franchise agreement between our client, Roy Weston Nominees Pty Ltd and [Mr] Taylor and [Mrs] Taylor dated 16 May 2002 (Franchise Agreement). It has come to our client's attention that on 9 January 2007 you lodged an application to register the words "Roy Weston Nominees the Trusted Name in Real Estate" as a trade mark for use in connection with the management of real estate and real estate services (Trade Mark Application). We advise as follows: 1. Breach of Franchise Agreement 1.1 The lodgement of the Trade Mark Application constitutes a breach of clause 7.11 of the Franchise Agreement which provides as follows: "The Franchisee will not adopt nor apply to register any mark or business name which would incorporate any feature of or which might be confusingly similar to the Roy Weston Identifications." [our emphasis] 1.2 "Roy Weston Identifications" is defined in clause 1.1 of the Franchise Agreement as follows: "Roy Weston Identifications" means the Business Name and the distinctive names, signs, designs, logos, Trade marks, business marks, commercial symbols and colours of the Franchisor including but not limited to the Roy Weston name and each and every one of them." [our emphasis] 1.3 Pursuant to clause 14.1(c) of the Franchise Agreement, if you fail to remedy a breach of the Franchise Agreement, our client is entitled to terminate the Franchise Agreement and sue you for damages. 2. Trade Mark Infringement 2.1 Our client is also the owner of registered Australian trade mark number 921551 "Roy Weston" (Trade Mark) 2.2 By virtue of that ownership, our client has an exclusive, Australia-wide monopoly to use the Trade Mark in connection with real estate affairs and other similar goods and services. The use by any person of the Trade Mark or any mark that is either substantially identical to, or deceptively similar to the Trade Mark in connection with the goods or services referred to above or similar goods and services without our client's consent, constitutes an infringement of our client's rights relating to the Trade Mark. 2.3 The lodgement of the Trade Mark Application without our client's consent constitutes an infringement of our client's rights relating to the Trade Mark. 3. Required Action 3.1 In the circumstances, we require that by no later than 5:00pm on 29 January 2007 you provide undertakings that: (1) before 5:00pm on 29 January 2007 you will withdraw the Trade Mark Application; and (2) you will refrain from applying to register a trade mark that is either substantially identical to, or deceptively similar with the Trade Mark in connection with the management of real estate and real estate services or similar services. 3.2 These undertakings can be provided by signing a copy of this letter and returning it to us. We look forward to your prompt response. Our client reserves all of its rights. … (emphasis added) 25 Deacons, then solicitors for Harcourts WA, wrote to RWN on 24 January 2007 drawing attention to the 2002 Franchise Agreement between Roy Weston Pty Ltd (which later became Harcourts WA), Roy Weston Nominees Pty Ltd and the Taylors saying that the application lodged on 9 January 2007 to register the words 'Roy Weston Nominees the Trusted Name in Real Estate' as a trade mark for use in connection with the management of real estate and real estate services was in breach of the 2002 Franchise Agreement. Clause 7.11 of the 2002 Franchise Agreement provided that the franchisee would not adopt, nor apply to register, any mark or business name which would incorporate any feature of or which might be confusingly similar to the 'Roy Weston Identifications'. 'Roy Weston Identifications' was defined in cl 1.1 of the 2002 Franchise Agreement as meaning: [T]he Business Name and the distinctive names, signs, designs, logos, Trade marks, business marks, commercial symbols and colours of the Franchisor including but not limited to the Roy Weston name and each and every one of them. 26 Deacons drew attention to the fact that cl 14.1(c) of the 2002 Franchise Agreement provided that if the Taylors failed to remedy a breach of the 2002 Franchise Agreement, Roy Weston Pty Ltd was entitled to terminate the 2002 Franchise Agreement and sue for damages. 27 Deacons additionally pointed out that their client was the registered owner of the 'Roy Weston' trade mark and, by virtue of that ownership, Harcourts WA had an exclusive Australia-wide monopoly to use the trade mark in connection with real estate affairs and other similar goods and services. Deacons asserted that there had also been an infringement of the 'Roy Weston' trade mark by virtue of RWN's lodgement of the trade mark application for 'Roy Weston Nominees the Trusted Name in Real Estate'. Deacons required undertakings that the trade mark application would be withdrawn and that RWN would refrain from applying to register a trade mark either substantially identical to, or deceptively similar to, the trade mark 'Roy Weston' in connection with the management of real estate and real estate services or similar services. A duplicate letter was enclosed setting out an undertaking. RWN was advised that the undertaking could be given by executing the duplicate letter and forwarding it to Deacons. 28 On 14 February 2007, Deacons, through M/s Seaton, wrote again to RWN referring to the 24 January 2007 letter. 29 In the 14 February 2007 letter, Deacons confirmed that it was advised by Mr Taylor of RWN that the Trade Marks Office had notified Mr Taylor that the trade mark application for 'Roy Weston Nominees the Trusted Name in Real Estate' had not been accepted, and that RWN did not propose to proceed with its application. Deacons noted, however, that, notwithstanding Mr Taylor's assurance, the trade mark application had not been withdrawn at that stage. Deacons repeated the requirement to withdraw the application and give the undertaking, as contained in the 24 January 2007 letter. That undertaking was never given. 30 By an email two days later, on 16 February 2007, from M/s Musca, a long term Harcourts WA employee, to Mr Shane Kempton, then CEO of Harcourts WA, and others, M/s Musca confirmed that she had received a call from 'Judith' of The Sunday Times newspaper raising a query as to the trading name 'Roy Weston Nominees Pty Ltd'. The email continued: I'm aware we have legal action pending. At this stage can we stop [Mr Taylor] from setting up a new logo and account under that name, at The Sunday Times – and also everywhere else? 31 On 27 March 2007, 'Roy Weston Pty Ltd' was renamed 'Harcourts WA Pty Ltd' and the commencement of the rebrand of the Harcourts WA office and business owner offices continued from March through to April with the official rebrand date being 2 April 2007. The 'Roy Weston Medallist "Wall of Fame"' was set up in the reception area of the Harcourts WA office in May 2007. 32 Mr Kempton ceased to be employed by Harcourts WA in January 2008. Mr Andrew Moore replaced Mr Kempton as CEO in March 2008. In addition, on 1 January 2008 M/s Jennifer Birrell commenced the role of General Manager of Harcourts WA, which continued until she ceased employment with Harcourts WA in July 2008. 33 Deacons wrote to RWN again on 14 January 2008. In this letter, further reference was made to the 24 January 2007 letter, Deacons noting that, despite their demand, the trade mark application for 'Roy Weston Nominees the Trusted name in Real Estate' had not been withdrawn, and raising the following other matters: 14 January 2008 … 1. As you are aware, our client is the registered owner of trade mark no. 921651, being the word "Roy Weston", in class 36, being real estate affairs. The trade mark was registered on 29 July 2002 and is currently in force. We are instructed that our client has traded under the name "Roy Weston" since 1957 in relation to real estate affairs and, as a result, has built up a substantial reputation in the Roy Weston name throughout Australia. 2. Since our letter dated 24 January 2007 it has come to our client's attention that Roy Weston Nominees Pty Ltd, and Mr and Ms Taylor, as shareholders and directors, are using trade marks either substantially identical or deceptively similar to trade mark no. 921651. In this respect, we refer to: (1) the advertisement placed on page 52 of the real estate section in the West Australian on 25 November 2007; (2) the use of the company name Roy Weston Nominees Pty Ltd; and (3) the use of the Business Name Roy Weston Nominees. 3. Our client is still investigating the extent of such and will provide further details, including the use of signage, letterheads, business cards and other advertising material if it should become necessary. … 14/01/2008 4. Such conduct constitutes: (1) an infringement of our client's rights as registered owner of trade mark no. 921651; (2) misleading or deceptive conduct in contravention of s52 of the Trade Practices Act 1974 (Cth) (TPA), as the use of the infringing mark may cause the general public to be misled as to there being some connection or relationship with our client; (3) a false representation in that you have the sponsorship approval or affiliation with our client which you do not have, in contravention of s53(a)(d) of the TPA; and (4) the tort of passing off, which has resulted in our client suffering loss and damage and which it will continue to suffer 5. Further, such conduct is in breach of the Franchise Agreement dated 16 May 2002 (Franchise Agreement), by which your company admitted that our client was the owner of the Roy Weston mark and that provides that upon termination the company shall cease immediately and forever desist from using such marks. 6. As guarantors under the Franchise Agreement, Mr and Ms Taylor are obliged to ensure compliance of these obligations and are liable for any breach. 7. Our client demands that by no later than 5pm, Wednesday, 23 January 2008 both the company and Mr and Mrs Taylor provide us with their written undertakings that they will from 14 days of the date of the undertaking: (1) cease trading under, advertising, using or displaying the Roy Weston name or mark and remove all such names and marks form the business including, but not limited to: (a) signs, letterheads, business cards or advertisements; (b) change the name of Roy Weston Nominees Pty Ltd; (c) assign the business name Roy Weston Nominees to our client; (d) withdraw trade mark application no. 1154742; (e) provide us with satisfactory evidence that they have taken the above steps; (f) continue to refrain from trading under, advertising, using or displaying the Roy Weston name or mark or any other name or mark that is deceptively similar to or otherwise infringing our client's rights in the mark "Roy Weston" including as registered owner of trade mark no. 921651; and (g) confirm that our client is entitled to all the rights, titles and benefits in and associated with the Roy Weston mark and brand and that they have relinquished any claim to that name or mark or any similar name or mark in connection with the conduct of their business. 8. Our client further requires before they commence: (1) trading under any other name or mark; (2) using any other company name; or (3) using any other business name, they provide us with a copy of the proposed mark or name for our client's approval. 9. If we do not receive from you the required undertaking at the time stipulated above and satisfactory evidence that the above demands have been carried out, then our client will have no choice but to commence appropriate proceedings to restrain the company and Mr and Mrs Taylor from using the Roy Weston mark and otherwise trading under or by reference to that name. In such proceedings, our client will also seek damages or alternatively an account of profits that the company or Mr and Mrs Taylor have gained from using the mark in breach of our client's rights, together with interest and costs. We look forward to receiving the required undertakings by 23 January 2008. Our client reserves all its rights. … (emphasis added) 34 Deacons sent further similar demands to the Taylors significantly later, on 11 June and 14 October 2008 in these terms: … 11 June 2008 … Roy Weston trade mark We refer to our previous correspondence regarding the above matter. We note that, after 15 months, you have still been unable to satisfy the Trade Marks Office's requirements in relation to registration of trade mark application no. 1154742. We also note that, despite that fact that you have been unable to register the trade mark, you continue to use the trade mark. We enclose copies of the pages of the Real Estate Section of the West Australian which contain our advertisements which include the trade mark. As we have previously advised you, such conduct constitutes: 1. an infringement of our client's rights as registered owner of trade mark no. 921651; 2. misleading or deceptive conduct in contravention of section 52 of the Trade Practices Act 1974 (Cth) (Act), as the use of the infringing mark may cause the general public to be misled as to there being some connection or relationship with our client; 3. a false representation in that you have the sponsorship approval or affiliation with our client which you do not have, in contravention of section 53(a)(d) of the Act; and 4. the tort of passing off, which has resulted in our client suffering loss and damage which it will continue to suffer. The conduct is also a clear breach of the Franchise Agreement dated 16 May 2002 (Franchise Agreement) in which you acknowledged our client as the owner of the Roy Weston trade mark and agreed to ceased immediately and forever desist from using such trade mark upon termination of the Franchise Agreement. In the circumstances and now that you have been unable to register the trade mark, our client has advised that it intends to pursue its rights in relation to the trade mark and proceed with further action in this matter if you do not confirm by 5:00pm on Wednesday 18 June 2008 that you agree to cease using the trade mark or use a different trade mark. Please also note that in the unlikely event that you are able to satisfy the Trade Marks Office's requirements in relation to your trade mark application no. 1164742, our client intends to then oppose registration of the trade mark by lodging a notice of opposition to registration of the trade mark. … 14 October 2008 … Roy Weston Trade Mark We refer to our letters dated 24 January 2007, 14 February 2007 and 14 January 2008 in relation to your continuing use of the Roy Weston brand and your trade mark application no. 1154742 (infringing conduct). While we anticipate receiving instructions to commence proceedings against you for the infringing conduct in any event, the outcome of application no. 1154742 will determine whether that includes opposition proceedings. In this respect, we note that the acceptance date for the application was originally in April 2008 but has been extended to 16 October 2008. We expect that those proceedings will issue soon after the application has been determined. Our client reserves all its rights in relation to your infringing conduct including to commence proceedings seeking damages, an account of profits and final injunctive relief an opposition proceedings (to the extent they become necessary). … (emphasis added) 35 On 30 October 2008, IP Australia informed RWN's solicitors that the final date for acceptance of trade mark application for 'Roy Weston Nominees the Trusted Name in Real Estate' by RWN had been extended to 16 January 2009. 36 On 12 February 2009, Mr Taylor filed a statutory declaration in support of RWN's application for the registration of the trade mark 'Roy Weston Nominees the Trusted Name in Real Estate' in his capacity as director of RWN. There was a deal of evidence and argument about the content of Mr Taylor's important statutory declaration. Relevantly, it reads as follows: … 4. Roy Weston Nominees is a Western Australian based, owned and operated real estate agency registered under the Corporations Act 2001. Roy Weston Nominees commenced trading under its current company name in March 1996. 5. In 1996 Roy Weston Limited (later renamed Roy Weston Pty Ltd and now named Harcourts WA Pty Ltd) informed me that it intended to establish a new WA Morley office and asked if I would like to be a part-owner of that business. I accepted Roy Weston Limited's offer to be a part owner and manager of the business. 6. As a result of this arrangement in March 1996 the existing business of L.J. Hooker Morley was purchased by Roy Weston Limited and thereafter Roy Weston Nominees was formed and Roy Weston Morley was transferred from Roy Weston Limited to Roy Weston Nominees. At this stage Roy Weston Limited owned 51% of the shares in Roy Weston Nominees and I held 49% of the shares in my name. The two directors of Roy Weston Nominees were the then Managing Director of Roy Weston Limited David Pilling, and myself. 7. After the purchase of L.J. Hooker Morley the business's name was changed to Roy Weston Morley ("Business") and 'Roy Weston' ("Name") was utilised in marketing and promoting the Business. 8. From March 1996 to May 1997 Roy Weston Nominees used the Name to promote the Business but the Business was not part of the Roy Weston franchise and not otherwise restricted in its use of the Name. 9. In March 1997 I acquired Roy Weston Limited's 51% shareholding in Roy Weston Nominees for the sum of $214,041.67 and thereafter owned 100% of the Business. 10. On or about May 1997 Roy Weston Nominees entered into a franchise agreement with Roy Weston Limited to franchise the Business commencing 1 May 1997. The term of the franchise agreement was five years and included as part of this agreement a clause that attempted to license the use of the Name. 11. On 16 May 2002 Roy Weston Nominees entered a replacement franchise agreement with Roy Weston Pty Ltd commencing 1 May 2002 extending the terms of the franchise. The term of this agreement was for a further five years. 12 On 29 July 2002 Roy Weston Pty Ltd applied to IP Australia for the name trade mark "ROY WESTON" ("the Trade Mark No 921651"). On 26 August 2004 the Registrar published in the Australian Official Journal of Trade Marks, an acceptance of Trade Mark Application No 921651 for registration. 13. Annexed hereto and marked with the letters "T-1" is a true copy of the details of this Trade Mark as given by IP Australia. 14. In 2004 the entire Roy Weston franchise (owned by Roy Weston Pty Ltd) including the Trade Mark, was purchased by Harcourts International Ltd ("Harcourts"). 15. In January 2008 Harcourts announced that it intended, effective 1 March 2008, to change the franchise name from Roy Weston to Harcourts and to cease its use of the Trade Mark and all associated branding and livery. 16. On or about February 2008 Harcourts WA Pty Ltd proposed that Roy Weston Nominees and other 'Roy Weston' franchisees execute a Deed of Amendment to the existing franchise agreement between Roy Weston Nominees, each of the other franchisees and Harcourts WA Pty Ltd that would have the substantive effect of altering the name, style and get-up of the franchise. 17. This substantive alteration of the name, style and get-up was rejected by Roy Weston Nominees and a number of other franchisees as being a fundamental breach of the franchise agreements entitling Roy Weston Nominees and a number of other franchisees to terminate their franchise agreements and walk away from the Harcourts franchise. 18. The Deed of Amendment remains unsigned by Roy Weston Nominees as at the date of execution of this Statutory Declaration. 19. In or about March 2008 the Applicant's Trade Mark was developed out of and based on the Name and used in the Business. 20. On or about March 2008 Roy Weston Pty Ltd Chief Executive Officer Mr Shane Kempton informed me that Roy Weston Pty Ltd would not stop me trading under the name Roy Weston Nominees. 21. On or about March 2008 the [sic] Harcourts ceased all trading under the Roy Weston trading name except for reference in Yellow Pages advertisements which had been published prior to the name change; and redirection on the Internet from Roy Weston's web site to the Harcourts web site. 22. In the 2009 Yellow Pages I notices [sic] that there is no advertising utilising the Trade Mark No 921651. TRADE MARK USAGE 23. Roy Weston Nominees has traded utilising the Name, being the substantive part of the Applicant's Trade Mark, for more than 12 years from March 1996 when the company was established through to the present day ("Usage Period"). 24. The Usage Period is comprised of the following tracts of time: • Roy Weston Nominees used the Name prior to entering into a franchise agreement with the franchisor Roy Weston Limited from March 1996 until May 1997. • Roy Weston Nominees use of the Name (prior to registration of Trade Mark No 921651 with IP Australia by Roy Weston Pty Ltd) from March 1996 through to 29 July 2002 (registration date). • Roy Weston Nominees used the Name and Trade Mark No 921651 from the date of its registration with IP Australia on 29 July 2002 to 1 March 2008 when Roy Weston Pty Ltd repudiated the franchise agreement by proposing to unilaterally amend the franchise agreement so that all franchisees were required to cease trading under the Name, cease use of Trade Mark No 921651 and adopt the name and style of 'Harcourts'. • Roy Weston Nominees has continuously (without interruption) used the Name since 1996 and has used the Applicant's Trade Mark from March 2008 and was still doing so as at the date of this Statutory Declaration. THE BUSINESS 25. Roy Weston Nominees has continuously used the Name, the Trade Mark (prior and subsequent to its registration with IP Australia) and since March 2008 used the Applicant's Trade Mark to promote and market the Business on marketing flyers, real estate banners, newspaper and magazine advertising, letterhead, clothing, signage, giveaway pens, fridge magnets, the Internet etc. 26. The Name was used in 1996 by the Business to promote and market the Business on marketing flyers, real estate banners, newspaper and magazine advertising, letterhead, clothing, signage, giveaway pens and fridge magnets. Annexed hereto and marked with the letters "T-2" are true copies of various marketing materials carrying the Name as utilised by the Business in or about 1996. 27. The Name was used by the Business, subsequent to Roy Weston Nominees entering a franchise agreement with Roy Weston Limited in May 1997, to promote and market the Business on marketing flyers, real estate banners, newspaper and magazine advertising, letterhead, clothing, signage, giveaway pens and fridge magnets. Annexed hereto and marked with the letters "T-3" are true copies of various marketing materials carrying the Name as utilised by the Business in or about 2000 and 2001. 28. Trade Mark No 921651 was used by the Business, subsequent to Roy Weston Nominees entering a franchise agreement with Roy Weston Limited on 16 May 2002, to promote and market the Business on marketing flyers, real estate banners, newspaper and magazine advertising, letterhead, clothing, signage, giveaway pens and fridge magnets. Annexed hereto and marked with the letters "T-4" are true copies of various marketing materials carrying the Trade Mark No 921651 as utilised by the Business in or about 2003 & 2005. 29. In 2009 the Applicant's Trade Mark is used by the Business to promote and market the Business on marketing flyers, real estate banners, newspaper and magazine advertising, letterhead, clothing, signage and the Internet. Annexed hereto and marked with the letters "T-5" are true copies of various marketing materials carrying the Applicant's Trade Mark utilised by the Business in 2008 and 2009. 30. As at the date of this Statutory Declaration the Applicant's Trade Mark and the Trade Mark No 921651 are being used by Roy Weston Nominees to promote and market the Business. 31. Roy Weston Nominees has used the Name, Trade Mark No 921651 and Applicant's Trade Marks to promote and market the Business (including to promote the sale and leasing of real estate properties) in the following suburbs of Perth, Western Australia: Morley, Dianella, Noranda, Bayswater, Embleton, Bedford, Beechboro, Kiara, Greenwood, Bassendean, Belmont. Carlyle, Victoria Park, West Perth, Ballajura, Middle Swan, Ellen Brook and Midland. 32. Use of the Roy Weston Name both prior and subsequent to its incorporation into the Applicant's Trade Mark and its registration with IP Australia has assisted in the growth of the Business. 33. In 1996 the Business rent roll consisted of 130 properties under management. This has since grown to 250 properties under management in 2008-2009. 34. Roy Weston Nominees spent approximately AUD$100,000.00 in the 2007-2008 financial year on advertising and marketing the Business utilising the Applicant's Trade Mark. 35. From 1996 to the end of the 2007-2008 financial year Roy Weston Nominees spent more than AUD$1,000,000.00 on advertising and marketing the Business utilising the Name, Trade Mark and Applicant's Trade Mark. 36. In 2008 and 2009 Roy Weston Nominees advertised in the Yellow Pages using the Applicant's Trade Mark. Annexed hereto and marked with the letters "T-6" are true copies of Yellow Pages advertisements for Roy Weston Nominees advertising the Business in 2008 and 2009. 37. Use of the Name, Trade Mark No 921651 and Applicant's Trade Mark from 1996 to the present has assisted in growth of the Business revenues from approximately AUD$600,000.00 in 1996-1997 to AUD$900,000.00 for the 2007-2008 financial year. HONEST CONCURRENT USE 38. From March 1996 to May 1997 Roy Weston Limited permitted Roy Weston Nominees to use the Name without licence and without restriction to promote the Business. 39. From May 1997 to March 2008 Roy Weston Nominees used the Name and the Trade Mark No 921651 (subsequent to its registration with IP Australia on 29 July 2002) under the licence via two successive franchise agreements. 40. From March 2008 after Harcourts repudiated the franchise agreement dated 16 May 2002 and the CEO of Roy Weston Pty Ltd gave me a verbal assurance that Roy Weston Pty Ltd would not oppose me trading under the name Roy Weston Nominees, I applied to IP Australia for registration of the Applicant's Trade Mark. … (emphasis added) 37 On 22 June 2009, 'Roy Weston Nominees the Trusted Name in Real Estate' was registered as a trade mark in the name of RWN with effect back to 9 January 2007. 38 Later that year, on 10 December 2009, RWN filed a word trade mark application for 'Roy Weston Real Estate', supported by a statutory declaration declared by Mr Taylor and dated 27 July 2010 (the content of which was substantially to the same effect as the earlier statutory declaration). It confirmed that 'the CEO of Roy Weston Pty Ltd [had given] Mr Taylor a verbal assurance that [RWN] could trade using the Name and company name, Roy Weston Nominees'. 'Roy Weston Real Estate' was entered on the Trade Mark Register on 6 December 2010 with effect from 10 December 2009. 39 On 30 March 2011, RWN requested the Western Australian Department of Commerce to cancel Harcourts WA's registered business name 'Roy Weston Real Estate'. The Department of Commerce subsequently cancelled the business name on 24 June 2011. 40 Harcourts WA sought and obtained a time extension to prepare evidence of use. In due course, no evidence of use was submitted by Harcourts WA, which led to its business name being removed pursuant to s 18 of the Business Names Act 1962 (WA). RWN subsequently applied for and obtained registration of that business name 'Roy Weston Real Estate' on 10 July 2011. 41 RWN applied to the Registrar of Trade Marks 12 days later to remove the Harcourts Trade Marks because of non-use. 42 On 7 September 2011, Harcourts WA opposed RWN's application for removal of the Harcourts Trade Marks from the Register. 43 In correspondence around this time, Minter Ellison, the solicitors by then acting for Harcourts WA, wrote to RWN on 15 September 2011 and repeated the demands of Harcourts WA. Relevantly, the 15 September 2011 letter said: … In 2004, Harcourts took ownership of the Roy Weston Group (Group) and associated trade marks and goodwill. The company name Roy Weston Pty Ltd was changed to Harcourts WA Pty Ltd in 2007 with the 'Roy Weston' branding remaining a key component to the Harcourts business. Mr Roy Weston was a founder of the Group and an icon within the real estate industry. 1.1 Roy Weston trade marks The Roy Weston branding owned by Harcourts includes the following Australian registered trade marks: (a) Roy Weston - registered trade mark number 921651; and (b) The House Sold Word in Real Estate - registered trade mark number 921677, (together, Roy Weston Marks). As their owner and proprietor, Harcourts has exclusive rights to use the Roy Weston Marks in connection with real estate affairs. As such, any unauthorised third party use of the Roy Weston Marks, or any other mark that is substantially identical or deceptively similar to the Roy Weston Marks, will breach Harcourts' rights under the [TMA]. 1.2 Harcourts' reputation in the Roy Weston name and marks In addition to being the owner of the Roy Weston Marks, our client has built up over time and continues to enjoy, a significant reputation in Western Australia in relation to the name and style of the Roy Weston Marks, and associated 'Roy Weston' names and branding, including the distinctive Roy Weston logo: (Roy Weston Logo) Harcourts is the registered proprietor of the following registered business names: (a) royweston.com.au Western Australia BN10017756 Registered 08/06/2004 (b) Roy Weston State Support Western Australia BN10513036 Registered 09/05/2006 (c) Roy Weston Real Estate Queensland BN6449402 Registered 08/04/1997 (d) Roy Weston Rural Western Australia BN09449115 Registered 05/03/2002 Given Harcourts' extensive reputation and goodwill associated with the 'Roy Weston' name, the Roy Weston Logo and each of the Roy Weston Marks (together, the Roy Weston Intellectual Property), any unauthorised third party use of the Roy Weston Intellectual Property in connection with real estate services in Western Australia is likely to constitute misleading or deceptive conduct and/or a false representation within the meaning of, and in breach of, the Australian Consumer Law (as set out in Schedule 2 of the Competition and Consumer Act 2010 and equivalent State and Territory Fair Trading Legislation, including the Western Australian Fair Trading Act 2010). 2. Roy Weston Nominees Pty Ltd We have recently been made aware Roy Weston Nominees Pty Ltd (RWN) has been trading under the 'Roy Weston' name, using a number of trade marks, domain names and trading names containing the name 'Roy Weston'. This use includes: (a) application for, and/or registration, and use of the following Australian trade marks: (i) Roy Weston Real Estate, pending trade mark application number 1419012: (ii) Roy Weston Real Estate. registered trade mark number 1336120; and (iii) Roy Weston Nominees The Trusted Name In Real Estate, registered trade mark number 1154742, (together, the Infringing RWN Marks); (b) use of the name and image of Mr Roy Weston, as depicted below: (c) registration and use of the domain names: (i) roywestonnom.com.au; and (ii) royweston.net.au, (together, the Infringing RWN Domain Names); and (d) registration and use of the following business and company names: (i) 'Roy Weston Real Estate', Western Australia registered business name BN11905281 (registered 10/07/2011); (ii) 'Roy Weston Nominees', Western Australia registered business name BN10634046 (Registered 04/10/2006); and (iii) the company name 'Roy Weston Nominees Pty Ltd' (ACN 073 213 920), since 2007. (together, the Infringing RWN Names). Each of the above uses constitutes an unauthorised use of the Roy Weston Intellectual Property. Each such use has occurred in trade or commerce, within the meaning of the Australian Consumer Law. 3. Infringement of Harcourts' rights Your registration and/or use of the 'Roy Weston' name and branding as described in point 2 of this letter amounts to a clear and flagrant breach of our client's rights. Moreover, your conduct is likely to represent to consumers that: (a) you are a supplier of our client's services, when this is not the case; and/or (b) you are sponsored, approved or endorsed by, or affiliated with, our client, when this is not the case. Indeed, your misrepresentations could not be more flagrant. The home page of your website, operated at the Infringing RWN Domain Names, even includes the statement: 'Welcome to Roy Weston Real Estate. For over fifty years the name Roy Weston has been the trusted name in real estate in Western Australia'. This statement is correct, but the 'trusted name' and associated goodwill clearly and unequivocally is owned by our client. In the circumstances, we have advised our client that your conduct: (a) breaches section 120 of the [TMA]; (b) constitutes misleading and deceptive conduct within the meaning of, and in breach of section 18 of the Australian Consumer Law; (c) makes a number of false representations, in breach of sections 29(b), 29(e), 29(f), 29(g), 29(h) and 30(l)(a) of the Australian Consumer Law; and (d) constitutes a tortious passing off of our client's 'Roy Weston' name and brand. We have advised our client as to the range of options available to it. These options include: (a) obtaining an urgent interlocutory injunction preventing the ongoing breach of our client's legal rights; (b) seeking compensation for loss and damage suffered by our client (including damage to its reputation and brand); and/or (c) seeking an order that you account to our client for any profits that you make through your unauthorised use of the Roy Weston Marks. RWN's conduct may also constitute a criminal offence by virtue of: (a) Section 146 of the [TMA]; and (b) Sections 151(b), (e), (f), (g) and (h) of the Australian Consumer Law. 4. Demand Our client requires that RWN undertake to: (a) immediately cease and forever desist from using the 'Roy Weston' name, the Roy Weston Logo, any of the Roy Weston Marks, or any substantially identical or misleadingly or deceptively similar name or logo; (b) cancel the registrations of each of the Infringing RWN Marks within 14 days; (c) cancel the registrations of each of the Infringing RWN Names (or change the Infringing RWN Names so that they no longer comprise or include the name 'Roy Weston', the Roy Weston Logo or any substantially identical or misleadingly or deceptively similar name or logo) within 7 days; (d) cancel the registrations of each of the Infringing RWN Domains within 7 days; (e) deliver up to our client within 14 days (or, with the consent of our client, which shall not be unreasonably withheld, destroy) all promotional or marketing material in your possession or control which includes the 'Roy Weston' name, the Roy Weston Logo, any of the Roy Weston Marks, or any substantially identical or misleadingly or deceptively similar name or logo, (together, Required Undertakings). 5. Confirmation Our client requires that you provide it with the Required Undertakings within 7 days of the date of this letter, failing which our client will take further action against RWN without further notice. We note that, if action is required to be taken by our client to enforce its rights against RWN, in addition to orders to the effect of the Required Undertakings, our client will seek additional relief from RWN, including: (a) damages for your breaches of the Australian Consumer Law; (b) damages or an account of profits for your breaches of the [TMA]; (c) corrective advertising and/or adverse publicity orders pursuant to the Australian Consumer Law; (d) interest; and (e) costs. We note that our client's investigation of RWN's conduct is continuing, and Harcourts otherwise reserves it rights. … 44 In response, on 30 September 2011, RWN's solicitors informed Minter Ellison relevantly as follows: … Our client is not, at this stage, willing to give the undertakings sought by your client for the reasons set out below. Background We are instructed that: 1. On or about 8 March 1996, Roy Weston Nominees was registered with shares being held by Roy Weston Limited and Desmond Taylor. 2. On or about 8 March 1996, Roy Weston Nominees commenced trading in relation to real estate affairs throughout Western Australia by reference to ROY WESTON. Between April 1996 to May 1997, Roy Weston Nominees continued to trade in relation to real estate affairs in Western Australia using the ROY WESTON name without any conditions, and without being part of the Roy Weston Limited franchise. 3. On or about 31 March 1997, Desmond Taylor and his wife, Georgina Taylor, purchased the shares held by Roy Weston Limited in Roy Weston Nominees and thereafter, owned 100% of the shares in Roy Weston Nominees. Roy Weston Nominees continued to trade in relation to real estate affairs in Western Australia using the ROY WESTON name without any condition upon the use of ROY WESTON by Roy Weston Limited, and without being part of the Roy Weston Limited franchise. 4. On or about May 1997, Roy Weston Nominees entered a franchise agreement with Roy Weston Limited to join the franchise that Roy Weston Limited was developing, commencing 1 May 1997. The period of the franchise agreement was five years expiring on 30 April 2002. None of its terms survive. 5. On 16 May 2002, Roy Weston Nominees entered a second franchise agreement with Roy Weston Pty Ltd commencing 1 May 2002 extending the term of the franchise. The period of this franchise agreement was for five years expiring on 30 April 2007. None of its terms survive. 6. On 29 July 2002, the successor to Roy Weston Limited, Roy Weston Pty Ltd, sought and subsequently received Australian trade mark registration for marks "ROY WESTON" (Trade Mark No. 921651) and "The House Sold Word in Real Estate" (Trade Mark No. 921677). Your letter of 20 September 2011 alleges that these trade marks have been infringed ("Allegedly Infringed Trade Marks"). 7. In 2004, your client, Harcourts International Ltd ("Harcourts") purchased Roy Weston Pty Ltd and its business (the "RW Business"). (Our client is not in a position to confirm or deny whether this validly conferred all of the RW Business' intellectual property rights to Harcourts.) 8. In January 2007, Harcourts announced that it intended, effective 1 March 2007, to change the franchise name from 'Roy Weston' to 'Harcourts' and to cease its use of the Allegedly Infringed Trade Marks and all associated branding and livery. We are instructed that this process was completed with remarkable speed and efficiency. We are further instructed that a number of Roy Weston franchisees (at least twenty) were opposed to the change in name and brand and refused to sign new franchise agreements with Harcourts and walked away from the franchise. Our client has continued to trade using ROY WESTON before, during and after the existence of the Roy Weston franchise. 9. On 9 January 2007, Roy Weston Nominees sought and subsequently received registration of the mark "ROY WESTON NOMINEES THE TRUSTED NAME IN REAL ESTATE" (Trade Mark No 1154742). Your client did not oppose the registration of this trade mark. 10. Harcourts has been aware all along of our client's continued use of ROY WESTON. In or about March 2007, Harcourts' Chief Executive Officer Mr Shane Kempton made an express and unequivocal verbal statement to Roy Weston Nominees that Roy Weston Nominees could trade using ROY WESTON and its own name. (emphasis added) 11. From on or about March 2007, Harcourts ceased all trading by reference to the Allegedly Infringed Trade Marks except for a residual reference in Yellow Pages advertisements which had been published prior to the name change; and redirection on the Internet from Roy Weston's web site to the Harcourts' web site. 12. On 10 December 2009, Roy Weston Nominees sought and subsequently received registration of the mark "ROY WESTON REAL ESTATE" (Trade Mark No 1336120). Your client did not oppose the registration of this trade mark. Notably, from 8 March 1996 to the present, Roy Weston Nominees has continued to use the name ROY WESTON in relation to real estate affairs throughout Western Australia without interruption. Alleged Trade Mark Infringement 13. Your client claims that our client has breached your client's rights in the Allegedly Infringed Trade Marks registered from 29 July 2002. 14. Our client has a number of defences to your client's claims, given the stated above background and in particular that: a. Roy Weston Nominees has continuously used ROY WESTON since 8 March 1996, which predates the Allegedly Infringed Trade Marks; b. the mark ROY WESTON substantially comprises the name of our client's business, "Roy Weston Nominees"; c. Roy Weston Nominees has honestly and concurrently used ROY WESTON; d. Roy Weston Nominees exercises a right to use a trade mark given to Roy Weston Nominees under the [TMA]; and e. your client has acquiesced to Roy Weston Nominee's use of ROY WESTON. 15. Consequently, our client has not infringed the Allegedly Infringed Trade Marks. Allegations of Passing Off 16. There are a number of elements which your client must prove in order to succeed in a claim of passing off. Reputation 17. You have asserted that your client "has built up over time and continues to enjoy, a significant reputation in Western Australia in relation to the name and style of the Roy Weston Marks, and associated 'Roy Weston' names and branding, including the distinctive Roy Weston logo." 18. However Harcourts has taken every effort to divest itself of any goodwill that might have been associated with the Allegedly Infringing Trade Marks. Consequently, it is unclear who in the public, if anyone, would associate Harcourts with the Allegedly Infringing Trade Marks. 19. In any event, any recent awareness of the brand will more likely be shown as being due to our client's promotional activities. Misrepresentation 20. Your client must prove that, in the course of trade or commerce, our client's conduct actually deceived or confused a significant portion of the relevant reasonable public or could have reasonably foreseeably have [sic] lead to such confusion. 21. However, it is not possible for there to be any confusion as Harcourts does not provide any services using the mark ROY WESTON. 22. In any event, our client has continued to supply the same services in respect of ROY WESTON since 8 March 1996. The real issue is the effect on the consumer. There has been no conduct by our client which would confuse the public into believing that the services provided by Roy Weston Nominees are those of Harcourts. Loss and Damage 23. To succeed in passing off, you must show that show that our client's conduct has caused actual damage or threatened damage to Harcourts' reputation or goodwill. 24. You have not established that there has been any damage suffered by your client. You will appreciate that damage is a key element of passing off. 25. In fact your client will be unable to demonstrate that it has suffered any loss on the basis that your client has ceased to use the Allegedly Infringing Marks. That is, as your client does not use the Allegedly Infringing Marks to promote real estate sales and services, then it has not suffered any loss by our client's use of the ROY WESTON mark. 26. Similarly, it is unclear what damage or devaluation could result to your client's brand as a result of our client's trading activities. Roy Weston Nominees has continued to conduct its real estate affairs in a manner maintaining its own highly regarded reputation and goodwill. Allegations of Breaches of the Australian Consumer Law 27. Your client has claimed that our client's conduct contravenes a number of sections of the Australian Consumer Law relating to misleading and deceptive conduct and misrepresentation. 28. Your client would not succeed in any cause of action based on these claims. The reasons are substantially as set out above in respect of your client's claim of passing off. 29. Our client notes your client's reference to potential criminal offences which, given the present context of a civil dispute, is an extraneous detriment. Miscellaneous Claim to Name and Image of Mr Roy Weston 30. It is interesting that your client has also claimed the right to the name and image of Mr Roy Weston as depicted in a photograph. You have not provided any evidence of how it is that your client came to own the rights in the photograph. In fact, our client was provided with the photograph by a Mr Stuart Weston, the son of the late Mr Roy Weston. · 31. Consequently, we require further information from you which might justify your client's claim to ownership of the copyright in the photograph and the basis upon which your client threatens proceedings of our client's alleged infringement of that copyright. Roy Weston Real Estate - Business Name 32. We advise that our client owns the business name ROY WESTON REAL ESTATE and is licensed as a real estate agent in Western Australia under this trading name. 33. We note that the ROY WESTON REAL ESTATE business name (Business Number 820906X7) was previously owned by your client until it was cancelled by the Department of Commerce (Consumer Protection) (the "Department") in June 2011 on the basis that your client was not carrying on business under the business name. 34. In this regard, we note that your client was: a. notified by the Department in May 2011 that a s 18 Notice of Cessation of Use of Business Name ("s 18 Notice") had been filed with respect to its business name and that unless your client was able to demonstrate use of the business name in commerce, the business name would be deregistered; and b. given one month (until 13 June 2011) to respond to the s 18 Notice and provide evidence that it was using the ROY WESTON REAL ESTATE business name in trade. Your client requested an extension of time to respond to the s 18 Notice, and this was granted by the Department; however c. unable to satisfy the Department that it was carrying on business under the Roy Weston REAL ESTATE business name. 35. Your client's business name was therefore deregistered on or about 24 June 2011. 36. Our client subsequently registered the ROY WESTON REAL ESTATE business name in July 2011. 37. As your client should be aware, any company that wishes to operate as a real estate agent in Western Australia must obtain a license from the Real Estate and Business Agents Supervisory Board ("REBA") in accordance with the Real Estate and Business Agents Act 1978 (WA). 38. REBA requires a company to licence its trading name if the trading name is different from the company's name. REBA is unlikely to allow a company to register a trading name which is owned by an entity other than the company wishing to licence the trading name. 39. Therefore, it is difficult to understand how your client can maintain that it intended to carry on business as a real estate agent in Western Australia given that: a. it allowed its business name to become deregistered, or it was otherwise unable to demonstrate to the Department that it was using the name in trade; and b. once the business name ROY WESTON REAL ESTATE was registered by another entity, your client would not be able to obtain a real estate agent licence using the business name as its trading name. … 3. THE CENTRAL ISSUES 45 The broad allegations were introduced at the commencement of these reasons. The further refinement of them is apparent in the exchanged correspondence. It is now necessary, however, to identify the precise issues arising from the pleadings and falling for consideration. 46 Some of the pleaded matters were either not developed in argument, fell away on the evidence, or, in substantive content, duplicated other pleaded matters. I have attempted to reduce them to the following in the RWN case: (a) whether, by requesting that RWN rebrand from 'Roy Weston' to 'Harcourts', Harcourts WA breached or repudiated the 2002 Franchise Agreement. In relation to the repudiation, if any, whether there was acceptance of the repudiation, thus terminating the 2002 Franchise Agreement. In relation to acceptance of the repudiation, whether such acceptance was pleaded; (b) in any event, even if the 2002 Franchise Agreement was terminated, whether RWN's covenant and agreement to cease using any of the 'Roy Weston Identifications' on termination of the 2002 Franchise Agreement (pursuant to cl 7.4(g)), survived termination; (c) whether a key letter of 7 December 2006 (not referred to above due to the controversy) was in fact sent at all or existed in the form now contended by RWN; (d) in relation to the alleged oral statement by Mr Kempton to Mr Taylor of RWN to the effect that RWN's 'new logo and trading style was acceptable to Harcourts [WA]': (i) whether Mr Kempton did in fact make a statement to that effect in a discussion with Mr Taylor; (ii) if so, whether Mr Kempton had authority from Harcourts WA to make such a statement to Mr Taylor, and whether Mr Taylor could have understood Mr Kempton to have the authority to so confirm; and (iii) the significance of the statement, given that it allegedly occurred prior to the expiry of the 2002 Franchise Agreement, and in light of the correspondence sent by Deacons on 24 January 2007, 14 February 2007, 14 January 2008, 11 June 2008; 14 October 2008 and correspondence from Minter Ellison dated 15 September 2011; (e) whether, for the purpose of s 92(4)(b) TMA, Harcourts WA used the RWN Trade Marks in Australia during the alleged non-use period between 22 June 2008 and 22 June 2011; (f) whether Harcourts WA 'used' (in the requisite sense): (i) the Harcourts Trade Marks, by organising and hosting the award ceremony during which the 'Roy Weston Medal' is awarded and transcribed with the words 'The House Sold Word in Real Estate' on the medal, (the 'most prestigious' award of the night), following which, the winner is promoted as having won the medal; and (ii) the 'Roy Weston' trade mark, by contracting with the White Pages to list the name 'Roy Weston' which cross-refers to Harcourts WA and thereby uses the name 'Roy Weston' as a referral to those franchisees which are listed under Harcourts WA; (g) whether the Harcourts WA proceeding was 'contrary to law': (i) within the meaning of s 42 TMA; or (ii) on the basis that Harcourts was 'not the owner' within the meaning of either s 58 TMA; or (iii) the trade mark was 'similar to another trade mark with a prior reputation' within the meaning of s 60 TMA; and (h) whether the current state of discovery may preclude a hearing being conducted into loss and damage or an account of profits. 47 The issues arising in relation to the Harcourts WA cancellation proceeding are: (a) given that the proceedings were commenced on 6 September 2012, whether time limitation precludes the RWN claim and, if so, whether that has been adequately pleaded; (b) whether RWN has breached a restrictive covenant contained in cl 7.4(g) of the 2002 Franchise Agreement, which required that RWN cease use of the 'Roy Weston Identifications' on termination; (c) whether RWN breached a clause of the 2002 Franchise Agreement under which RWN covenanted and agreed that it would not attach to or use any 'Roy Weston Identifications' as part of any company name, business name, trade mark or logo, other than in accordance with the agreement, or as authorised by Harcourts WA, pursuant to cl 7.4(b); (d) whether RWN has infringed the Harcourts Trade Marks, contrary to s 120 TMA; (e) whether RWN's applications for registration of the RWN Trade Marks should have been rejected on the basis that: (i) the use of the RWN Trade Marks by RWN was 'contrary to law', specifically s 42 TMA, as usage of the Trade Marks was a breach of the 2002 Franchise Agreement; and (ii) pursuant to s 44(2) TMA, on the grounds that the RWN Trade Marks were substantially identical and therefore deceptively similar to the Harcourts Trade Marks; (f) whether the application for the registration of the RWN Trade Marks would have been successfully opposed on the grounds that RWN was not the owner of the RWN Trade Marks for the purpose of s 58 TMA. More specifically, and significantly, whether, as Harcourts WA contends, it was not open to RWN to assert 'ownership' of the RWN Trade Marks, given that it was a franchisee and had only been granted a licence to use the 'Roy Weston identifications' under the 2002 Franchise Agreement; (g) whether the application for the registration of RWN Trade Marks would have been successfully opposed by Harcourts WA on the grounds that the Harcourts Trade Marks had acquired a reputation in Australia such that registration or usage of the RWN Trade Marks 'would be likely to deceive or cause confusion' within the meaning of s 60 TMA; (h) whether Mr Taylor made a 'false suggestion or misrepresentation' within the meaning of s 88(2)(e) TMA or acted in 'bad faith' (s 62A TMA) by stating in his statutory declaration that: (i) from March 1996 to May 1997 'Roy Weston Limited' permitted RWN to use the 'Roy Weston' name without licence and without restriction to promote the business or RWN; (ii) Harcourts WA repudiated the 2002 Franchise Agreement; and (iii) Mr Kempton provided RWN with an oral assurance that RWN could trade using the 'Roy Weston' name; (i) whether the RWN Trade Marks should be removed or cancelled pursuant to s 88(1) TMA; (j) whether, in relation to the passing off and misleading or deceptive conduct claims: (i) at the time of the allegedly contravening conduct by RWN, Harcourts WA had a reputation of or goodwill as a provider of franchise and real estate services; (ii) RWN had engaged in misleading or deceptive conduct by misleading potential customers into believing either that RWN's services were Harcourts WA services, or that there was a connection between RWN's services and Harcourts WA services; and (iii) the extent to which the rebranding of the name 'Roy Weston' to Harcourts WA is relevant to the passing off claim and/or to the misleading and deceptive conduct claim; (k) whether RWN's usage of the RWN Trade Marks constitutes passing off; (l) whether RWN's usage of the RWN Trade Marks was in breach of s 18 ACL; (m) whether Harcourts WA has suffered any loss and damage; and (n) whether Harcourts WA is entitled to injunctive relief to restrain RWN from ongoing breaches of the 2002 Franchise Agreement. 48 In summary, while there is a substantial collection of issues on the pleadings, the central questions are: (1) Has Harcourts WA established use of the Harcourts Trade Marks during the relevant period sufficient to rebut the allegation by RWN of non-use? (2) Even if the 2002 Franchise Agreement was repudiated, does that affect the rights established and agreed under the 2002 Franchise Agreement? (3) Was RWN authorised to lodge an application to register the RWN Trade Marks? 49 These are the three substantive issues which recur in the evidence and their resolution will be central to resolving the majority of the other detailed issues discussed above. 4. KEY STATUTORY PROVISIONS 50 The case raises for consideration a number of areas of the TMA, conspicuously, the following. 51 Section 42 TMA, dealing with rejection of a trade mark where registration would be contrary to law, relevantly reads: 42 Trade mark scandalous or its use contrary to law An application for the registration of a trade mark must be rejected if: (a) the trade mark contains or consists of scandalous matter; or (b) its use would be contrary to law. 52 Section 44 TMA, dealing with substantial similarity, relevantly reads: 44 Identical etc. trade marks … (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if: (a) it is substantially identical with, or deceptively similar to: (i) a trade mark registered by another person in respect of similar services or closely related goods; or (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods. … 53 Section 58 TMA, addressing ownership, relevantly reads: 58 Applicant not owner of trade mark The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. 54 Section 60 TMA, addressing deception or confusion through the use of a trade mark of repute, relevantly reads: 60 Trade mark similar to trade mark that has acquired a reputation in Australia The registration of a trade mark in respect of particular goods or services may be opposed on the ground that: (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion. 55 Section 88 TMA, on cancellation of trade marks, provides: 88 Amendment or cancellation-other specified grounds (1) Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by: (a) cancelling the registration of a trade mark; or (b) removing or amending an entry wrongly made or remaining on the Register; or (c) entering any condition or limitation affecting the registration of a trade mark that ought to be entered. (2) An application may be made on any of the following grounds, and on no other grounds: (a) any of the grounds on which the registration of the trade mark could have been opposed under this Act; (b) an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation; (c) because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion; [sic] (e) if the application is in respect of an entry in the Register - the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation. 56 Section 92 TMA, dealing with non-use, provides: 92 Application for removal of trade mark from Register etc. (1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register. (2) The application: (a) must be in accordance with the regulations; and (b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered. (3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register. Note: For prescribed court see section 190. (4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: (a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith: (i) to use the trade mark in Australia; or (ii) to authorise the use of the trade mark in Australia; or (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods and/or services to which the non-use application relates and that the registered owner: (iv) has not used the trade mark in Australia; or (v) has not used the trade mark in good faith in Australia; in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed; (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner: (i) used the trade mark in Australia; or (ii) used the trade mark in good faith in Australia; in relation to the goods and/or services to which the application relates. Note 1: For file and month see section 6. Note 2: If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market. (5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first mentioned person as the applicant. 57 Section 101 TMA, dealing with removal of a trade mark, provides: 101 Determination of opposed application-general (1) Subject to subsection (3) and to section 102, if: (a) the proceedings relating to an opposed application have not been discontinued or dismissed; and (b) the Registrar is satisfied that the grounds on which the application was made have been established; the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates. (2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates. (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established. (4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of: (a) similar goods or closely related services; or (b) similar services or closely related goods; to those to which the application relates. 58 Section 120 TMA, dealing with infringement, provides: 120 When is a registered trade mark infringed? (1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. (2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or (b) services that are closely related to registered goods; or (c) services of the same description as that of services (registered services) in respect of which the trade mark is registered; or (d) goods that are closely related to registered services. However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion. (3) A person infringes a registered trade mark if: (a) the trade mark is well known in Australia; and (b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (i) goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or (ii) services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and (c) because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and (d) for that reason, the interests of the registered owner are likely to be adversely affected. (4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia, one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason. 59 Section 122 TMA, addressing non-infringement, provides: 122 When is a trade mark not infringed? (1) In spite of section 120, a person does not infringe a registered trade mark when: (a) the person uses in good faith: (i) the person's name or the name of the person's place of business; or (ii) the name of a predecessor in business of the person or the name of the predecessor's place of business; or (b) the person uses a sign in good faith to indicate: (i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or (ii) the time of production of goods or of the rendering of services; or (c) the person uses the trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services; or (d) the person uses the trade mark for the purposes of comparative advertising; or (e) the person exercises a right to use a trade mark given to the person under this Act; or (f) the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it; or (fa) both: (i) the person uses a trade mark that is substantially identical with, or deceptively similar to, the first mentioned trade mark; and (ii) the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it; or (g) the person, in using a sign referred to in subsection 120(1), (2) or (3) in a manner referred to in that subsection, does not (because of a condition or limitation subject to which the trade mark is registered) infringe the exclusive right of the registered owner to use the trade mark. (2) In spite of section 120, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark. 60 Section 124 TMA, dealing with non-infringement by reason of prior use of an identical or deceptively similar trade mark, provides: 124 Prior use of identical trade mark etc. (1) A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to: (a) goods similar to goods (registered goods) in respect of which the trade mark is registered; or (b) services closely related to registered goods; or (c) services similar to services (registered services) in respect of which the trade mark is registered; or (d) goods closely related to registered services; if the person, or the person and the person's predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before: (e) the date of registration of the registered trade mark; or (f) the registered owner of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark; whichever is earlier. (2) If the unregistered trade mark has continuously been used only in a particular area of Australia, subsection (1) applies only to the use of the trade mark by the person in that area. 61 Section 127 TMA, dealing with limitations on relief, provides: 127 Special case-plaintiff not entitled to damages etc. If: (a) in an action for the infringement of a trade mark registered in respect of particular goods or services, the court finds that the defendant has infringed the trade mark; and (b) either: (i) the defendant has applied to the court under subsection 92(3) for an order directing the Registrar to remove the trade mark from the Register in respect of those goods or services; or (ii) the defendant has applied to the Registrar under subsection 92(1) for the trade mark to be removed from the Register in respect of those goods or services, and the matter has been referred to a court under section 94; and (c) the court finds that, because the trade mark has not during a particular period (critical period) been used in good faith by its registered owner in relation to those goods or services, there are grounds (under subsection 92(4)) for so removing the trade mark from the Register; the court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any infringement of the trade mark that happened during the critical period. 5. EVIDENCE FROM KEY WITNESSES ON THE CENTRAL ISSUES 62 Apart from general background, much of the evidence was directed to the three central questions (stated above at [48]) above and, particularly, to the question of whether or not RWN was somehow authorised by Harcourts WA to use the Harcourts Trade Marks in the manner it contends. 63 Evidence was given first by the Harcourts WA witnesses. 5.1 M/s Musca 64 M/s Musca swore three affidavits and one statutory declaration. M/s Musca has been employed by Harcourts for 37 years in varying roles, starting as an office junior and continuing in her current role as an executive assistant. 65 M/s Musca identified that the 'Roy Weston' name (the subject of the Harcourts WA trade mark) was first used in Australia on 1 July 1957 by Mr Roy Weston when he first began trading. She explained that the chain of ownership of that trade mark was from 1957 until 1985 with Mr Roy Weston trading as a sole trader and later with partners as Roy Weston and Co. On 30 January 1985, Roy Weston and Co 'became' Roy Weston Limited. On 18 January 1999, Roy Weston Limited was converted to Roy Weston Pty Ltd. On 27 March 2007, Roy Weston Pty Ltd was renamed to Harcourts WA. 66 M/s Musca who was the company secretary for Harcourts WA between 14 August 2002 and 7 August 2006 and a director from 1 January 2005 until 7 August 2006, knew from 'records maintained by Harcourts WA' that the trade mark 'Roy Weston' was first owned by Mr Weston, as a sole trader from 1957, then later with partners until 1985 and then by Harcourts WA. 67 When M/s Musca joined (what is now) Harcourts WA in 1977, the Taylors were not involved in the Roy Weston and Co business. She was aware they operated two franchises, the first being the Roy Weston Bassendean franchise through Challenge Realty and, the second, being the Morley Business through the Taylors' company, RWN. M/s Musca recalled from the Harcourts WA records that the Roy Weston Morley franchise was previously an LJ Hooker office and that Harcourts WA lent RWN money in relation to the purchase of LJ Hooker Morley at the same time it granted RWN a franchise to operate the office, 'Roy Weston Morley'. 68 M/s Musca referred to use of the 'Roy Weston' name within the alleged non-use period. She discussed the Roy Weston Medal - Harcourts WA's most prestigious award which would only be awarded to an individual on one occasion. It was presented annually at the Harcourts WA Gala Dinner and Awards Night and was named in honour of the founder of the business operated by Harcourts WA, Mr Roy Weston. She explained that the Roy Weston Medal was promoted to the public as an award provided by Harcourts WA recognising a Harcourts WA employee or franchisee for upholding the Harcourts WA values and philosophies in real estate affairs. She spoke of the 'Wall of Fame' where the medallists are recognised. The 'Roy Weston' name has also been promoted, she said, in the 'Inside Harcourts' magazine distributed to all members of the Harcourts Group within Australia, and used as promotional tool in the recruitment of staff and prospective business owners. It is published on the Harcourts Group website and can be viewed online. M/s Musca also referred to the publication of the Roy Weston Medal winner on 6 June 2011 in The Sunday Times newspaper. The Sunday Times' circulation is around 282,000, and has an estimated readership of 683,000 across Western Australia. Harcourts WA continues to use The Sunday Times each year to promote the Roy Weston trade mark. She explained that the expenditure for the Harcourts WA Dinner and Awards Night and associated promotion and publicity over the alleged non-use period was considerable. 69 M/s Musca confirmed that on 31 January 2004, the Harcourts Group acquired 100% of the issued share capital of Harcourts WA, which was at that time named Roy Weston Pty Ltd. The change in ownership was announced at a Franchise Council meeting and business owners' meeting attended by Mr Green and Mr Paul Wright of Harcourts Group. 70 M/s Musca described the 'rebrand'. In early 2006, she was informed by Mr Kempton that Harcourts Group had made a decision to rebrand the Harcourts WA business from 'Roy Weston' to 'Harcourts'. During this process, M/s Musca was responsible for organising events connected to the rebranding, such as business owner meetings, lunches and retreats. The occurrence, time, content, invitees and budget were determined by the Harcourts Group and communicated to her by Mr Kempton or representatives from the Harcourts Group based in Brisbane. She was named on a number of the internal rebrand documents but did not attend internal rebrand strategy meetings. Those meetings were always attended by personnel from Harcourts Group in addition to Mr Kempton in his role as CEO for Harcourts WA. Such representatives were also present at the Harcourts WA office for much of the rebrand process and coordinated the rebrand. Mr Green and other Harcourts WA personnel attended most of the meetings and events. Mr Green and Mr Wright were the key people who addressed business owners regarding the rebrand. M/s Musca produced a 30 May 2006 record of a business owners' meeting in Ascot, where the rebrand was first announced. M/s Musca organised those meetings on behalf of Harcourts WA. 71 The Franchise Council was a representative body of Harcourts WA group, including business owners and Harcourts WA staff. She was the secretary of that Franchise Council and Harcourts WA CEO was usually the Chair. That meeting was held at the Harcourts WA office and the business owners' meeting was held straight afterwards in a function room at the 'Vic Pub' nearby. At each of those meetings she said that Mr Green and Mr Wright introduced themselves to business owners and announced that Harcourts Group had acquired the Harcourts WA business. The head office of the Harcourts Group was in Brisbane. 72 Mr Green requested M/s Musca to stay and talk with the business owners over drinks after the formal part of the business owners' meeting since M/s Musca had been with Harcourts WA for a long time and had relationships with many of the business owners. Her impression was that the business owners were generally positive about the change in ownership after her discussions with them. Mr Green and Mr Wright had assured everyone in their presentation that it would be business as usual, but the business owners would have access to new resources and opportunities through the Harcourts Group network. Her impression was that the change in ownership of Harcourts WA in 2004 did not result in much change for the Harcourts WA business or the business owners. 73 On 16 October 2006, there was a second business owners' retreat at Rottnest Island in which the rebrand was further discussed. Again, M/s Musca produced an agenda in relation to that meeting. At the Rottnest meeting, Mr Roy Weston, as founder of the Harcourts WA business, attended and spoke. He indicated that he was supportive of the rebrand and the opportunities it presented for business owners. He also presented a speech describing his own personal history and the development of the Roy Weston brand and business. M/s Musca produced the Mr Weston's speech notes relating to that part of his speech about his own personal history and the development of the brand and business which he provided to M/s Musca after the Rottnest meeting. 74 Mr Kempton attended some rebrand events without Harcourts Group personnel, such as a series of lunches around 21 January 2007, attended by small groups of business owners at the Vic Pub to 'road show' the rebrand. Subsequently, Mr Wright flew to Perth to make himself available for one on one meetings with business owners at the Rendezvous Observation City Hotel, Scarborough. This was an opportunity for business owners who had concerns regarding the rebrand to discuss these with Harcourts Group, she said. 75 M/s Musca attended most of those meetings. She gave extensive descriptions of all the activities involved in the rebrand. I do not propose to descend to the entirety of the detail. One topic of importance, however, is the involvement of Mr Kempton at the time. M/s Musca's evidence was that he had commenced as CEO on 22 March 2006 and held the position until January 2008. He ceased being a director of Harcourts WA on 7 August 2006. She used to sit next door to his office and spoke with him daily and often discussed rebrand activities. M/s Musca gave evidence that at no time did Mr Kempton ever say to her, or in her presence, that: (a) any business owner or any other person would be given permission to continue to use the Roy Weston name after the rebrand; (b) he had given permission to any business owner to use the Roy Weston name after the rebrand; or (c) he had told RWN or Mr Taylor that Harcourts WA would not stop RWN or Mr Taylor from using the Roy Weston name after the rebrand. 76 The Harcourts WA CEO continued to manage the Harcourts WA business, but now reported to the Harcourts Group and had less discretion and decision-making power than before. By August 2006, M/s Musca noticed a significant change in the Harcourts WA business. At that time, Mr Kempton, the Harcourts WA CEO, ceased to be a director of Harcourts WA. Sometime later, the Harcourts Group also took over management of all business names and domain names from Harcourts WA. 77 M/s Musca also made the point that from 2004, when the Harcourts Group purchased the shares in Roy Weston Pty Ltd, Mr Green was in Perth, at least, every three months for around a week at a time. He had a big involvement in the rebrand and approval from him was required for any decisions. 78 M/s Musca was aware that a number of the business owners were not continuing with Harcourts WA after the rebrand, but not of RWN in particular. However, she was not aware of anything different about RWN's departure from Harcourts WA as compared with other departing business owners. 79 M/s Musca's understanding (and I stress 'understanding' only) was that RWN was only permitted to trade under the name 'Roy Weston Morley' while it was business owner and it was not permitted to trade under any other name while a business owner. 80 M/s Musca's understanding was that the franchise network operated on the basis that business owners were to cease using their name when they left the group. She is not aware of any agreement between the Taylors and Harcourts WA which might affect that position. This evidence, of course, was only the understanding of M/s Musca. 81 M/s Musca recalled receiving a call from an employee of The Sunday Times on 16 February 2007 alerting Harcourts WA to some apparently unauthorised use of the 'Roy Weston' name by RWN. She was not aware of the outcome of that issue as it was not relevant to her role at the time. She knew that RWN continued to use the name Roy Weston after it ceased to be a business owner as she lived in the nearby Morley area, but she was not involved in any further dealings with RWN or the Taylors. 82 M/s Musca's position, consistent with the Harcourts WA case, was that even after the rebrand, Harcourts WA wanted to continue to pay tribute to the history of the Roy Weston network and continued to use that name. She spoke of recruitment presentations given to all prospective business owners covering the history, including the name 'Roy Weston' and the rebrand. She gave evidence about a 50 year commemorative celebration of the Roy Weston brand on 31 July 2007 and the history of the Roy Weston Medal given annually to the most outstanding salesperson at the Harcourts WA Gala Dinner and Awards Night. Her opinion was that the Roy Weston Medal was a very prestigious medal, as was the Roy Weston Wall of Fame on which medallists were displayed. She described the Roy Weston Wall of Fame as being displayed in a prominent position in the reception area of Harcourts WA's office from about May 2007, although that description is disputed in terms of the location being prominent to members of the public. M/s Musca explained that the Roy Weston trade mark was also promoted by Harcourts WA in the 'Inside Harcourts' magazine. She describes the magazine as being a promotional tool in the recruitment of staff and prospective business owners. It is also published online. 83 M/s Musca's evidence was also that Harcourts WA owned the roywestonpd.com domain name to host a Harcourt Project development website for project managers and selling agents of urban and rural residential sites (Harcourts Projects). The Harcourts Project development is a type of franchise speciality offered by Harcourts WA. The Harcourts Project development business owners would purchase, subdivide and develop residential land. The associated website was used for project managers and selling agents of urban and rural residential estates. 84 M/s Musca produced a 'screen dump' of the website from the relevant period. She also noted that the domain name, roywestonpd.com, now directs traffic to the Harcourts Group website at harcourts.com.wa which showcases all of the services of the Harcourts Group. M/s Musca was cross-examined about the internet archive, 'Wayback Machine', from which she had produced the screen dump. She was not familiar with the process involved in producing a 'screen dump'. 85 M/s Musca was questioned about a significant issue between the parties surrounding correspondence purportedly sent by Mr Taylor on 7 December 2006 to Mr Kempton. Mr Taylor gave evidence that on 7 December 2006 he sent a letter to Mr Kempton (unsigned 7/12 letter), which is as follows: … Dear Shane Further to our phone conversation, this is to confirm we will not be changing brands to Harcourts and will trade as an independent from 1st March 2007. It would be pointless trading as Harcourts for 2 months and ask that we be released on that date. We further confirm that we will not be joining any other franchise, and it is not our intention to re-launch as new franchise group. Shane, it would be appreciated if you could release our Domain names as promised as soon as possible to enable us to proceed to the next stage. In closing we wish yourself and Harcourts success in the re-branding and every success for the future. … 86 Mr Taylor also gave evidence that another letter was sent to Mr Kempton on 7 December 2006, which was signed by Mr Taylor and stamped as received by Roy Weston Ltd on 8 December 2006 (signed 7/12 letter). The signed 7/12 letter reads as follows: … Dear Shane Further to our phone conversation, this is to confirm we will not be changing brands to Harcourts and will trade as an independent from 1st March 2007. It would be pointless trading as Harcourts for 2 months and ask that we be released on that date. We further confirm that we will not be joining any other franchise, and it is not our intention to re-launch as new franchise group. Shane, it would be appreciated if you could release our Domain names as promised as soon as possible to enable us to proceed to the next stage. In closing we wish yourself and Harcourts success in the re-branding and every success for the future. … 87 M/s Musca noted that the version of that letter received by Harcourts WA had identical content, but the version received by Harcourts WA was signed by Mr Taylor, printed on a standard letterhead for a Harcourts WA franchisee at that time and was date stamped by Harcourts WA as received on 8 December 2006. The version Mr Taylor produced was unsigned and on a different letterhead. M/s Musca's evidence was that she had never seen the version annexed to Mr Taylor's affidavit prior to the document being produced by Mr Taylor. 88 Mr Taylor had also sworn in the same affidavit that, after receiving the letter in October, he met with M/s Musca at a social function and informed her of a letter he had received from Deacons. Mr Taylor says that M/s Musca said to him words to the effect of '… I don't know why because they aren't going to do anything about it', 'haven't you already beaten them [in court]? They know that they can't do anything to stop you' and 'don't worry about the letter you won't hear anything more about it'. M/s Musca said, however, that she did not recall having such a conversation with Mr Taylor, nor attending a social event at which he was present in October 2008. She was actually not aware either that Deacons were sending letters to RWN. She knew that Harcourts WA had taken steps to stop RWN from using the 'Roy Weston' name after it ceased to be a franchisee of Harcourts WA. However, she says that, as it was not relevant to her role, she was not aware of precisely what those steps were, nor who at Harcourts WA or the Harcourts Group was responsible. She did not believe she would have spoken those words and believed Mr Taylor would have been very aware that she had no power in relation to such matters. 89 Mr Taylor had also sworn that when he spoke with M/s Musca about a letter received from Harcourts' solicitors in September 2011, at a Christmas function held by Mr and Mrs Wellstead in December 2011, she said to him words to the effect of: [Harcourts WA] did not care about you using the name of Roy Weston when there was only you and Warwick using the Roy Weston name. When they found out that Acton and Ausnet were talking to you they shit themselves and Marc Taintey started the action… 90 M/s Musca also denied saying those words and using such language. She accepted the possibility that she may have, in effect, speculated that Harcourts WA had become increasingly concerned about RWN's use of the Roy Weston name once they had become aware that Acton and Ausnet were taking an interest in the RWN business. She had never been told that there was such a concern by anybody at Harcourts WA. 91 In the same affidavit, Mr Taylor had noted that in or about 2010 he was informed by M/s Musca that everything pertaining to Roy Weston was thrown out of the Harcourts WA office, including manuals, training books, advertising and everything else that had the 'Roy Weston' name or Roy Weston logo attached to it, including the Wall of Fame and a photo of Mr Roy Weston. Mr Taylor understood that M/s Musca's husband removed the photo of Mr Weston from the frame and kept the frame for himself. M/s Musca rejected this evidence, denied that this conversation took place and also rejected the correctness of the statements attributed to her. 92 Mr Taylor had attributed other remarks to M/s Musca in the same affidavit. He said that he was further informed by M/s Musca that on one occasion when Mr Green visited the Perth office he had admonished her for wearing a red dress (with red being the corporate colour of Roy Weston), and told her she should not do so again in the future. M/s Musca said that this account was incorrect, but there were some other anecdotes concerning her red dress which are not relevant. 93 Mr Wellstead, in support of the RWN case, confirmed in his affidavit that M/s Musca had spoken to him about Mr Taylor (of RWN) using the 'Roy Weston' name. He said that she made a comment to the effect that Mr Taylor was 'keeping the Roy Weston name alive'. M/s Musca agrees that she had conversations on the topic but did not make any comment with respect to keeping the name alive. 94 Having had the opportunity to observe the witnesses and consider their responses in cross-examination and to consider the plausibility of Mr Taylor's account, while little turns on these contested exchanges, I generally prefer the evidence of M/s Musca where it differed from his accounts. Although she is very loyal to her employer, having served the Harcourts Group for so long, I did not consider her account was exaggerated, biased or implausible. To the contrary, it accorded with the content of uncontentious documents and established facts and was in conformity with the authority that she had at the time. Mr Taylor, on the other hand, had, I think, persuaded himself to believe, at least prior to his own cross-examination, a version of events which sat well with his legitimate entitlements as he saw them. 95 Finally, in relation to listings in the White Pages telephone book, M/s Musca confirmed that listings had been made under the names of 'Roy Weston' and 'Harcourts' in 2006/2007, 2007/2008 and 2008/2009 editions of the White Pages and also online at www.whitepages.com.au. 96 In relation to domain names, she gave evidence that prior to Harcourts WA changing the primary brand of its network from 'www.royweston.com.au' on around 1 April 2007, to www.harcourts.com.au around the time of the rebrand. In addition, Harcourts WA, prior to the rebrand, used its website at www.royweston.com.au, and, since the rebrand, has used its website at www.harcourts.com.au to showcase its offices, its real estate agents and other real estate professionals in those offices and to advertise its real estate services and real estate properties and developments currently available for sale and lease through the Harcourts Group. 97 It was made clear through M/s Musca's cross-examination that there was no selling of real estate carried out on the Harcourts WA Gala Dinner and Awards Night. She did not dispute the assertion put to her that in order to trade real estate pursuant to the Real Estate and Business Agents Act 1978 (WA) (REBA Act) it is necessary to trade under a business name. Accordingly, she accepted that her understanding that trading under a business name for which one does not have a business name registration was impermissible. M/s Musca has also won a Roy Weston Medal, even though she is not a sales person. 98 M/s Musca accepted that Mr Kempton was Mr Green's eyes and ears in Perth and Mr Kempton would report frequently to Mr Green about what was going on. 99 She confirmed that she was always aware that RWN was marketing real estate by the name 'Roy Weston Nominees'. She said she did not do anything about it because Mr Kempton would have been aware as well. It was not a topic of conversation in the office. 100 In cross-examination, M/s Musca confirmed that she had been telephoned by M/s Judith Craig of The Sunday Times newspaper alerting Harcourts to the unauthorised use of the Roy Weston name. M/s Musca confirmed in cross-examination that she enquired of Mr Kempton as to whether it was possible to stop Mr Taylor from 'setting up a new logo and account under the Roy Weston name at The Sunday Times and everywhere else'. She did not recall Mr Kempton's response. She recalls no discussion with Mr Kempton after that time on that topic, nor the response to M/s Craig at The Sunday Times. She knew that Mr Taylor was operating and selling real estate under the 'Roy Weston Nominees' name. She was not personally aware of any steps taken to stop that trading, as this issue was in the hands of Mr Kempton. 5.2 M/s Furse 101 M/s Bronwyn Furse, a solicitor of the firm currently acting for Harcourts WA, gave evidence of various searches that she caused to be conducted. She had conducted searches on the website 'https://whois.domaintools.com' to identify historic registration details for the domain name www.royweston.com.au. Those searches identified that Harcourts WA was the registrant of the domain name www.royweston.com.au from, at least, 26 October 2004 until, at least, 22 August 2009. 102 M/s Furse also conducted searches on the 'Internet Archive' website (at https://archive.org/web/). M/s Furse produced eight searches of the Internet Archive to identify archived copies of the website with the domain name 'www.royweston.com.au'. Those searches showed that visitors visiting the royweston.com.au website were redirected to the website with the domain name 'www.harcourts.com.au' by use of a transfer link. While being transferred, visitors were shown an image, annexed to these reasons as Annexure A, of the City of Perth which bears the inscription 'Roy Weston is now proudly part of the Harcourts Real Estate Group. We are redirecting you to the new view in Real Estate'. 103 M/s Furse gave evidence that on conducting a search on 12 February 2014 of the Harcourts Group website at www.harcourts.com.au, using the search engine 'Google', over 4,000 references to 'Roy Weston' were returned. 104 M/s Furse also gave evidence of information and records obtained from Sensis Pty Ltd in relation to listings for 'Harcourts' and 'Roy Weston' in the White Pages between 2006/2007 and 2008/2009. 105 M/s Furse was cross-examined as to the accuracy of the Wayback Machine, but it was quite clear that, as a solicitor, M/s Furse did not purport to have expansive expert knowledge about the way in which the 'Wayback Machine' worked. Her understanding was that a website showing a box with a cross through it meant that the particular item so appearing was no longer available. Her understanding was that it would not or may not have appeared that way at the actual date in respect of which the historical record was reproduced. There would have been something there, which was no longer available. I have worked on a similar understanding, but the searches produced by the Wayback Machine were not critical to my finding as to what information was available on the internet on the relevant dates. 5.3 Mr Green 106 Mr Michael Green is Managing Director of Harcourts International Ltd, CEO of the Harcourts Group and a Director of Harcourts WA. His evidence related to the history of development of the Harcourts Group in Wellington, New Zealand in 1888 and the international growth. He has never met the Taylors. He referred to sentences in Mr Taylor's affidavit where Mr Taylor said 'the sale of Roy Weston Limited to Harcourts Pty Ltd subsequently took place. The [2002 Franchise Agreement] was assigned to Harcourts Pty Ltd'. 107 Mr Green said this statement is incorrect in a number of respects, namely: (a) there is no entity named 'Harcourts Pty Ltd'; (b) Roy Weston Limited was not sold to any Harcourts entity. Roy Weston Limited is the entity which is now named Harcourts WA. The shares in Roy Weston Limited were simply acquired by Harcourts Australia; and (c) the 2002 Franchise Agreement between RWN and Harcourts WA was not assigned. The 2002 Franchise Agreement was executed by Harcourts WA and to Mr Green's knowledge was never assigned. 108 Mr Green also responded to evidence given by Mr Taylor concerning rebranding meetings and, in particular, a meeting held in March 2006. Mr Green's evidence was that: (a) the meeting was held to discuss the change of the brand from Roy Weston to Harcourts. While Mr Green was in favour of that occurring, it was certainly communicated by him to all franchisees at the meeting that any change would have to be with the majority of the business owners being in support; (b) there was not majority support for the proposed rebrand from Roy Weston to Harcourts at the meeting, so the decision was made at the time not to proceed. Mr Green was certainly not angry, as Mr Taylor suggests. His position had always been that he would rebrand the franchise network in Australia if there was majority support to do so; and (c) after the meeting, discussions continued between representatives of Harcourts WA and its franchisees. He was personally involved in a number of the discussions. Once there was a majority of support for rebranding, a decision was made by Harcourts WA to do so. 109 Mr Green understood that some of the franchisees were opposed to rebranding and that the change was difficult for some of them to accept, but his understanding (and I stress, once again, that his evidence was accepted only on the basis of an understanding) of the terms of the Franchise Agreements was that Harcourts WA had a right to require franchisees to rebrand. Nevertheless, his direction to Mr Kempton at the time was that where a franchisee indicated that he or she did not wish to rebrand, Mr Kempton should: (a) try to persuade the franchisee to rebrand; or (b) if he was unable to so persuade a franchisee, allow the franchisee to terminate its franchise agreement with Harcourts WA and exit the business without penalty. 110 Mr Green said that the aim for Harcourts WA in undertaking its rebrand in 2007 and subsequently was to ensure the consumers were aware that when dealing with Harcourts in Western Australia, they were dealing with Roy Weston. He listed similar matters to those referred to in the extensive evidence of M/s Musca. 111 Mr Green gave evidence as to general instructions given to Mr Kempton, but did not have any specific dealings with or knowledge about the arrangements concerning Mr Taylor. He became personally involved with only two franchisees who expressed discontent, neither of these being Mr Taylor, and each of them deciding to 'leave'. 112 Mr Green confirmed in cross-examination that one of the ways the Harcourts Group sought to expand its business was to acquire other real estate agencies or, even acquire franchised chains of real estate agencies, as well as achieving organic growth by new sales of their own franchises. Mr Green was unshaken on the point that Harcourts WA had retained 'quite a few Roy Weston things' and that 'Roy Weston was a very strong WA brand'. He explained that 'it was part of our investment and we certainly didn't want to put that at risk'. Mr Green confirmed that Mr Kempton was his 'eyes and ears' and right-hand man in Perth and that they liaised closely. He had no recollection of discussions with Mr Kempton concerning RWN. 113 Mr Green was taken to the signed 7/12 letter. Mr Green had no recollection of discussion with Mr Kempton on the topic of the letter. There were numerous discussions, so he accepted that it was likely at some point that it was discussed. He did not at all recollect receiving the unsigned 7/12 letter, with the logo, email address and domain name set out above (at [85]). 114 Mr Green had no recollection of any issue concerning the Taylors at the time of giving evidence. 115 The suggestion that Mr Kempton, on behalf of Harcourts WA, arranged with Mr Taylor for Mr Taylor to not only have a reduction in his fees, but also to be able to continue to use the name 'Roy Weston Nominees, the Trusted Name in Real Estate' as his business name 'forever' was certainly not Mr Green's understanding of the position. Mr Green explained that any decision about an ongoing brand was one that would come to him. His view and the view of Mr Kempton was that if people did not want to stay involved with the Harcourts Group, he wanted them to be able to leave as amicably as possible. This could be done in three ways. They could rebrand, that is, change their brand to make existing arrangements without any fee penalty or if they chose to trade under the 'Roy Weston' brand, but were going to leave, they could trade out the rest of their existing agreement, but there was no opportunity or option to continue the brand after the expiry of existing agreement. There was never an option at any time discussed where someone could keep the brand indefinitely. It was not commercially sensible or viable, he said. 116 Mr Green was questioned about motives of Harcourts WA in, for its part, pursuing this litigation. Mr Green explained that the target market for Harcourts is in the mid to higher end of the market. Acton is potentially at the high end. It was put to Mr Green that the only time Harcourts showed any interest in RWN was when it learned that Acton was interested in purchasing RWN. It was also put that at no time from 2007 were any steps taken, other than some correspondence on behalf of Harcourts WA, to stop RWN trading and the only thing that motivated Harcourts WA to commence the present action was some large competitor, like Acton, 'getting hold of' the name 'Roy Weston' and using RWN to gain access to the mid-range market. Mr Green said he had never heard of any such suggestion and 'today is the first mention of Acton being involved in this at all'. 117 Mr Green was reminded that on 24 June 2011, the Department of Commerce cancelled the business name registration for 'Roy Weston Real Estate' (Australian Business Number 8209067X) registered on behalf of Harcourts WA. Mr Green said he was unaware of that. It was put to him that the reason it was cancelled was that Harcourts WA was not carrying on business under the business name 'Roy Weston Real Estate'. He did not recall that being so either. Mr Green maintained that the name 'Roy Weston' was still being used in the business, even though they were not trading as 'Roy Weston'. 5.4 Messrs Honey and Massam 118 Mr Neil Honey was called by Harcourts WA. He gave evidence about the Roy Weston Medal, and, in cross-examination, spoke about the switch 'from red to blue' and the change of names. Mr Honey accepted that the Roy Weston Hall of Fame was in a corridor: … that takes you out the back towards the training room. You probably can't see it if you're in the reception, while you probably can see it from the reception you can't go down the passage way unless the receptionist says so. 119 Mr Thomas Massam was also called by Harcourts WA. He is a Roy Weston Medallist. He gave evidence about the Medal, his online Harcourts WA professional profile, the recognition of his award on the Harcourts WA website, the updating of his hardcopy Harcourts WA professional profile, photographs on display, wearing the Roy Weston lapel pin on his suit jacket and various other evidence concerning usage of the 'Roy Weston' name in conjunction with the Roy Weston Medal. In cross-examination, he gave evidence of the rebrand and of the Medal, in respect of which he was particularly passionate. He said that he had medals for being an Australian champion cyclist, swimming, ballroom dancing and a lot of other things, but the Roy Weston Medal was the medal of which he was most proud. 5.5 M/s Birrell 120 M/s Birrell is the CEO of Harcourts WA, having first joined Harcourts WA in February 2001, when it operated under the name Roy Weston Real Estate. Initially she worked for the franchisee at Joondalup and remotely from Bunbury. She took on an additional role as the Harcourts WA financial controller. She was involved with invoicing third parties and franchisees for amounts payable to Harcourts WA, became the property management operations manager on 24 November 2011 until 2013, when she was appointed CEO of Harcourts WA. She was based in Bunbury in 2006 and 2007 during the rebrand. She gave evidence of her understanding of the effect of the various agreements. 121 M/s Birrell gave corroborative evidence of the intention of the rebranding and the Roy Weston Medal. Much of her first affidavit was drawn in terms of the effect of legal agreements. As with other witnesses, I put that evidence to one side as she was not a legal expert. 122 M/s Birrell's second affidavit dealt with a suggestion by Mr Taylor that a telephone conversation took place in which RWN's outstanding fees were discounted. She rejected the suggestion that she had any authority to discount any fees owing to Harcourts WA without the consent of the CEO, who was then Mr Kempton. She said she was not authorised to negotiate any other arrangements. 123 M/s Birrell accepted in cross-examination that there was a specific occasion where Mr Kempton authorised her to accept $4,000 to clear an outstanding debt, which was approximately a 50% reduction. In the accompanying letter confirming the arrangement, she had said 'we wish you the very best in the future'. She was pressed on cross-examination with the suggestion that the connotation from these words was that the connection between the parties was final even though RWN was trading and using the name 'Roy Weston'. M/s Birrell accepted that proposition. 124 There were similar lines of cross-examination in relation to the Roy Weston Medal. M/s Birrell was also cross-examined on the proposition that in late July 2013, Harcourts WA were concerned about the fact that RWN was selling real estate by reference to the name 'Roy Weston'. 5.6 Mr Moore 125 Mr Moore was appointed as a director of Harcourts WA on 29 August 2008 and held that position until about mid-November 2011. The handover from Mr Kempton was informal and brief. His handover was provided by Mr Green. Mr Green spent a week or so with Mr Moore in Perth in his first few weeks, then another one or two later on. He became aware from his handover discussion with Mr Green that RWN had not ceased using the 'Roy Weston' name and that this was without the consent of Harcourts WA. He was not required to do anything about this. He understood that this was in the hands of Harcourts Group. 126 In cross-examination, he accepted that he was aware that RWN was running offices under the 'Roy Weston' name at three locations (it being put to him that the locations, which he could not recall, were Morley, Warwick and Midland). Under the period of time when he was CEO, the Department of Commerce in Western Australia cancelled the business name, Roy Weston Real Estate, formerly held by Harcourts WA due to the fact that Harcourts WA was not carrying on business under that name. Mr Moore did not recall this incident and, specifically, did not recall fielding any enquiries from the Commissioner about the use of the business name. Mr Moore was adamant that there was dual branding in the rebranding. 5.7 Mr Taylor 127 Mr Desmond Taylor, together with Mrs Taylor (who did not give evidence), were directors of Challenge Realty Ltd which traded as 'Roy Weston Bassendean' from on or about January 1988. 128 Mr Taylor had a conversation with Mr David Pilling, the then manager of Harcourts WA, in about January 1996. Mr Pilling, deceased by the date of trial, was said to have asked Mr Taylor if he would like to form a partnership with Roy Weston Limited to establish a real estate office in Morley. He was informed that JA Bryce Proprietary Limited, then trading as LJ Hooker, was selling its business, including a rent roll of about 150 properties and they also had a lease on an office in Morley. Mr Taylor said that he did not want to do that but Mr Pilling persuaded him to do so and that finance would be provided for that purpose. 129 RWN was to be the vehicle by which the joint venture would enter a franchise arrangement with Roy Weston Limited to undertake the Roy Weston Morley office business. Roy Weston Limited was not only the franchisor, but also a guarantor guaranteeing its own performance so that Roy Weston Limited together with Mr and Mrs Taylor went 'co-surety' in respect of the obligations undertaken by RWN for this period. It was a term of this first franchise agreement dated 1 April 1996 that it would terminate or expire on the successful application for a licence to operate as a real estate agency office or on 30 April 1996, whichever occurred first. As RWN could not get a licence with which to operate the Morley office, it was only operative for about a month. The franchise agreement was later replaced with another franchise agreement. It was a franchise agreement granted by Roy Weston Limited to JA Bryce Proprietary Limited. The licence was obtained on 10 May 1996. Mr Taylor's evidence was that from 30 April 1996 to 1 May 1997, there was no franchise agreement. The Roy Weston Morley office was operated by RWN, which was then jointly owned by Roy Weston Limited and Mr Taylor. It is not apparent that any particular legal submission was developed in relation to this period. 130 During that period Mr Taylor said he operated the office and reported to his joint venture partner about the successes and failures in trading. He traded under the 'Roy Weston' name without any complaint and, indeed, he said, with the approval of Roy Weston Limited (now Harcourts WA). Also during this time, Mr Taylor, as a representative of RWN, became a unit holder of Strand Settlements Pty Ltd (now Strand Conveyancing Pty Ltd), the conveyancing organisation associated with Roy Weston Limited. Strand Conveyancing Pty Ltd, which has been owned by the Harcourts Group since 2004, continues to pay RWN and continues to do business with RWN. 131 Mr Taylor made it clear that the entity using the 'Roy Weston' trade mark universally throughout that period was RWN. RWN's case is that RWN still uses that trade mark, and the question of control of the corporation at the time is irrelevant. 132 In December 2006, North Bell Pty Ltd (another Roy Weston franchisee) sought the advice of Mr Corby SC, as his Honour then was, in relation to the change in franchise arrangements when Harcourts WA became the owner of Roy Weston Pty Ltd. Although the precise mechanism is unclear, Mr Taylor also obtained a copy of the opinion of Mr Corboy SC. In this opinion, Mr Corboy SC opined that the proposal by Harcourts WA to impose a new and very different contract on North Bell was not permissible. Counsel's view was that Roy Weston Pty Ltd could not unilaterally impose such an agreement, in particular, it could not unilaterally decide or change the name and getup of the franchise network. Any attempt to implement such a proposal, counsel said, would constitute a repudiation by Roy Weston Pty Ltd of the franchise agreement, which could entitle North Bell to terminate the agreement and sue for damages if it so elected. RWN took the view that it too would be entitled to terminate its 2002 Franchise Agreement for repudiation. However, the advice also went on to say that North Bell would lose the right to use the name 'Roy Weston', the related getup in association with its business and the 'Roy Weston System' as defined in the franchise agreement. This is an important consideration in the context of this dispute. It would also appear to be very clearly significant that by entry into the 2002 Franchise Agreement (and others), RWN (in this case) was very clearly acknowledging ownership of the 'Roy Weston Identifications'. 133 But Mr Taylor believed that RWN was in a different position from other franchisees because he believed that it had its own independent entitlement to use the name. This was first, arising from its 'joint venture' with Roy Weston Limited in developing its own name or reputation by reference to the name 'Roy Weston' during the period of that joint venture. It was, secondly, by reason of the corporate name, 'Roy Weston Nominees Pty Ltd' in which RWN held the shares. 134 Mr Taylor's further key evidence was that Mr Kempton orally approved the idea that RWN would be entitled to continue to use the name Roy Weston in connection with its business by saying 'I would need to approve your logo, please send me a copy of your logo'. That, Mr Taylor said, was followed by the unsigned 7/12 letter. Harcourts denies ever receiving it. 135 Mr Taylor gave evidence that RWN has continued to trade by reference to the name 'Roy Weston Nominees' and the name 'Roy Weston' since the change of name to 'Harcourts' without any complaint by Harcourts WA, other than in the five letters from M/s Seaton. Those actions have not been opposed, despite assertions that they would be. The business name Roy Weston Real Estate, previously owned by Harcourts WA, was removed in June 2011. Every week advertisements under the name 'Roy Weston' were lodged by RWN without complaint. 136 Mr Taylor also referred to correspondence between himself and M/s Birrell in July 2006 about outstanding franchise fees and a conversation with M/s Birrell in which she agreed that 'all matters outstanding' between RWN and Harcourts WA would be settled by the making of a payment of $4,000. I have summarised the response from M/s Birrell denying this suggestion above (at [122]-[123]). 137 The thrust of Mr Taylor's evidence was that Harcourts WA consented to and acquiesced in relation to every step that RWN took until the time Harcourts WA discovered that Acton was perceived as being interested in purchasing Mr Taylor's business. Despite threats by Harcourts WA to oppose the trade mark registration, this never eventuated. 138 It was put to Mr Taylor in cross-examination that it was not correct to describe the nature of the relationship between the parties in 1996 as a joint venture, as it was really a franchise (with Roy Weston Limited the franchisor and RWN the franchisee) even though Roy Weston Limited had 51% and Mr Taylor had 49% of the shares in RWN. Mr Taylor was surprised by the existence (and, further, content) of a franchise agreement at that time. He had forgotten about the executed document of 1 April 1996 until he saw it about two years prior to giving evidence and could not remember signing it. He accepted that it does show that he entered into a franchise agreement on 1 April 1996 with Roy Weston Limited in respect of the Morley Business from on or about 1 April 1996. This reinforces the nature of the relationship, despite Mr Taylor's lack of recollection, and does not accord with the suggestion of a joint venture, at least as far as the intellectual property rights were concerned. 139 Mr Taylor accepted or did not dispute that he had the same rights as the other 40 franchisees with respect to the name Roy Weston in the period April 1996 through to June 1997. 140 Mr Taylor accepted that there were various Roy Weston domain names, including those concluding with '.com,' '.au' and '.net'. He said that he attempted in about mid-November 1996 to register the domain name Roy Weston Nominees and could not do so as it was registered in the name of Harcourts. So, in December 1996, he asked Mr Kempton to cancel the domain names to enable RWN to register them. His evidence was that 'it surprised me and annoyed me that they wouldn't do it. I thought they had no intention of using the name so it thought it was just vindictive'. 141 In cross-examination, Mr Taylor was taken to the letter from Deacons of 24 January 2007 (set out above at [24]). It was put to Mr Taylor that, after he received the 24 January 2007 letter from Deacons which clearly stated the position that Harcourts WA was taking, he realised that he was not going to be able to register 'roywestonnominees' as a domain name, so he registered roywestonnom.com.au instead. Mr Taylor denied that position. He did accept that he registered roywestonnom.com.au on 25 January 2007. He explained that he registered the roywestonnom.com.au domain name on the advice of the 'domain people' who could not understand why he wanted 'roywestonnominees.com' as it was 'too long'. Rather, 'they' suggested that it would be much better to have roywestonnom.com.au. It was put to him that, in truth, Mr Taylor never registered the Roy Weston Nominees domain name because of the demand from Deacons on behalf of Harcourts WA. I note that at this stage RWN had already obtained a number of other domain names, being: roywestonnominees.com; roywestonnomineesmorley.net.au; roywestonmorley.com; royweston.wa.com.au; roywestonnomineeswa.com.au; and roywestonnom.com.au. 142 Despite this, the proposition put in cross-examination had merit. 143 More importantly, Mr Taylor was cross-examined at length regarding both the signed 7/12 letter and unsigned 7/12 letter. Mr Taylor said he had no doubt that both of the letters were sent, but the second one was simply sent to provide Mr Kempton with a copy of the logo. He admitted the wording could have been better, but the intention of the first letter was to advise that Mr Taylor was not going to rebrand. The 'second letter' (the unsigned 7/12 letter) was just a copy providing a copy of the logo at Mr Kempton's request. It was put to him that the unsigned 7/12 letter was never sent by Mr Taylor. His evidence on this was uncertain. He had no direct knowledge because he left the matter to his secretary. He speculated that she reprinted the letter on the new letterhead. He said he found the letter on the file. He does not know whether his secretary put it there. He was continually pressed on the proposition that the letter was never sent to Harcourts WA. He was pressed on the basis that the unsigned 7/12 letter combined with his affidavit were intended to create a misleading impression that he had provided the unsigned 7/12 letter to Mr Kempton to look at the logo, whereas that never happened. In contrast, he did send the signed 7/12 letter. His affidavit (at [33]) reads: I spoke to Mr Shane Kempton, CEO of Harcourts, on a number of occasions about [RWN's] plans to continue trading using our own name. On 7 December 2006, I sent a letter to Mr Kempton, telling him that we would not be signing the Deed of Variation and would not be staying on as Harcourts' franchisee. I asked that Roy Weston Nominees should be released from the Roy Weston Nominees Franchise Agreement immediately. I also asked Mr Kempton to cancel some domain names that Harcourts WA had registered that referred to Roy Weston Nominees. I sent the letter on our new letterhead, since Mr Kempton had asked to see our new logo, to ensure that Harcourts were happy with it. … (emphasis added) 144 Mr Taylor was pressed on the question of whether he ever told Harcourts the matters raised in [33] of his affidavit set out above. 145 Mr Taylor was pressed on the fact that he failed to respond to any of the demands from Deacons to correct the misapprehension. In particular, in the second paragraph of the letter from Deacons on 14 February 2007, the solicitors said: … We confirm your advice that you have received a letter from the Trade Marks Office advising that your Trade Mark Application has not been accepted and that you do not propose to proceed with that application. … 146 Mr Taylor admitted that he never responded to this letter, but did not agree with what was said. He had not contacted M/s Seaton of Deacons on the topic. He responded to none of the letters from Deacons. He accepted that he did understand very clearly that Harcourts WA objected to his application to register the trade marks. Mr Taylor said he had not received the letter of 14 January 2008 from Deacons, but did not call to correct the contents of the subsequent letter which referred to it. 147 On 12 February 2012, Mr Taylor declared in a statutory declaration filed with IP Australia that, regardless of the claims made by Deacons, he was satisfied he was entitled to register the name 'Roy Weston Nominees the Trusted Name in Real Estate'. He referred to a so-called joint venture arrangement entered into in 1996 which, in turn, gave rise to IP Australia approving the registration of the Trade Mark containing the word 'Nominees'. These statements, Harcourts WA suggested, were false. 148 This was followed with an attempt to register the trade mark with the name 'Roy Weston Real Estate' without the word 'Nominees' in it, which he considered he was entitled to do, essentially because he 'owned' the name 'Roy Weston'. It was put to him that Deacons had never suggested that Harcourts WA could not prevent RWN from trading using its company name. It was also put to him that he had not, contrary to his affidavit, stated to M/s Seaton of Deacons that he intended to proceed with registration of the trade mark application. In his affidavit he swore that he spoke to her on two occasions. M/s Seaton denied this. There is no record of such communication. He was pressed on that topic in cross-examination. He was also cross-examined on the various conversations to which he referred in his affidavit and which have been mentioned above and which were disputed by others. It is not possible to reach conclusions on each of these exchanges as to who was giving the accurate, fair or truthful account, but it is sufficient to say that a number of witnesses disagreed with Mr Taylor on these peripheral conversations. Taken alone, they do not bear greatly on the issues to be determined. Cumulatively, they do not assist RWN. 149 Mr Taylor accepted in cross-examination that he was very unhappy about the rebranding proposal. He was content with the Roy Weston brand and with their own performance. 150 Mr Taylor's position throughout was that he was entitled to trade under his own company name and his own identity. It was put to him that he was promoting the names 'Roy Weston' rather than the word 'Nominees'. He did accept that, but on the basis that he was promoting his own company name. It was put to him that he deliberately chose a logo together with the words above it to persuade consumers that there was an association between real estate services he conducted and the real estate services that were provided by Harcourts WA. He rejected this and related propositions. 151 Mr Taylor was pressed on the fact that he had opportunistically relied on the company name to continue to use the Roy Weston name without any justification. Mr Taylor continually rejected this on the basis that he had paid a considerable amount of money for the company name and there were no conditions attached. It was put to him that he in fact paid no money for the name. He had paid money, rather, to acquire the business being conducted by JA Bryce in Morley under the name LJ Hooker. He continually argued that what he had purchased was RWN. The position was that he acquired shares in RWN and RWN acquired the business assets of the business that was conducted by JA Bryce in respect of Morley under the name of LJ Hooker. 152 He agreed that he did not get his graphic designer to prepare the pre-printed stationery before he registered the domain name roywestonnom.com.au because that would be a very expensive exercise. 153 Generally, the cross-examination was lengthy and several of the answers given by Mr Taylor under cross-examination were not persuasive. In particular, on the key issue of authority being given by Harcourts WA for RWN to lodge the trade mark application, I am not persuaded that RWN had received such approval. The evidence surrounding the circumstances of the delivery and content of the unsigned 7/12 letter, which I find Harcourts WA never received, was unsatisfactory and unconvincing. The description of the relationship in 1996 being described as a joint venture was not correct, and to proceed with the registration in the face of demands from Deacons, to which no response was given was, in my assessment, a calculated risk taken by Mr Taylor. The content of the statutory declaration was not correct. I am unable to conclude that Mr Taylor thought it may have been. 5.8 Mr Johnson 154 Mr Simon Johnson was called by RWN. In his evidence in chief, Mr Johnson, an IT expert, explained that he was a director of a company which managed IPNeighborhood.com, an information provider relating to domain names and intellectual property. He explained that he was first introduced to the internet in 1989, when the internet was quite basic in terms of functionality and was predominantly used for academic purposes. Since 1998, he has contributed to publications in the Australian and international media on internet and technology related issues. In July 2003, he began writing a book 'Keep Your Kids Safe on the Internet'. This involved reviewing IT security products, such as Firewall software, anti-virus, web filtering and email filtering products. The book was published worldwide by McGraw-Hill, New York in 2004. The book sold 40,000 copies, was number one in its category and won an iParenting Media Award in the United States of America. 155 Mr Johnson has also contributed to a chapter entitled 'A Guide to Safety Security and Privacy on the Web': Parker J, Total Surveillance (Piatkus Publishing, UK, 2000). He has reviewed various other books and regularly writes articles and reviews. 156 From October 1994 to March 1996, Mr Johnson was employed by Formatel to create and support a proprietary on-line service. This eventually evolved into an early internet provider with multiple dial-up modems. At that time, he was responsible for registering multiple domain names by a Melbourne university. In March 1996, he co-founded and was the technical services director of Internet Service Providers Pty Ltd (ISP). ISP was one of Australia's first national internet companies with points of presence in each State. From 1996 to 2004, he held numerous positions in the fields of security and risk management with companies such as Pacific Access (Yellow Pages), Ansett and Medibank Private. From August 2004 to March 2006, he moved to Sydney to take up a position as information security manager at Coca Cola Amatil. In March 2006, he moved back to Melbourne to take up the position of chief technology officer at Trusted Delivery, which was owned by multiple private equity firms and operated an anti-spam and anti-phishing email service called 'Blue Bottle. He worked with law enforcement agencies, including the Bureau of Investigation, the Australian Federal Police and the Victoria Police. In 2007, he co-founded Domainer Income, a domain name investment platform. He has continued to hold senior positions in information technology. 157 Mr Johnson was armed with the exchanged pleadings and affidavits in the matter and, in particular, the affidavit of M/s Furse and Mr Davies of 21 February 2014. 158 On 13 May 2014 and 15 May 2014, Mr Johnson connected to the internet using DomainTools.com to review the Who Is history of roywestonpd.com. Copies of the Who Is records at DomainTools.com were attached to his affidavit, as was the Who Is history. From the information, which was annexed, he gave evidence that on 26 March 2013, the domain name was created. From around 26 March 2013 to around 3 April 2014, the domain name was registered to Harcourts WA. On 8 December 2012, the Who Is records gave notice that the domain name was in a 'reactivation period'. This occurs when a domain name has not been renewed and the domain name subsequently goes through a process of being deleted. On around 14 November 2012, the domain name appeared to not be resolvable, that is to say, that it did not display a website. 159 On around 10 November 2012, the name server associated with the domain name was deleted. On 12 October 2012, the expiry date of the domain name was listed in the Who Is record as 28 September 2012. From around 4 December 2007 to around 12 October 2013, the domain name was registered to Global iQ. From around 30 September 2006 to 30 September 2012, the DNS was changed on multiple occasions to and from Gins.net and Name-Services.com. 160 The Who Is record showed that the roywestonpd.com domain name was within the reactivation period process from around 15 October 2012 to 8 December 2012. Mr Johnson explained that when a '.com' domain name enters this process, it ceases to resolve to the server that it is pointed to and if it is being used, this would mean that both the website hosted on the domain name and also any email addresses that use the domain name would stop working. If a domain name is being actively used, the users would immediately notice when it enters this process. Copies of the reactivation period process were attached to his affidavit. 161 Mr Johnson explained that when a '.com' domain name expires, it goes through a process whereby it eventually ceases to exist. It is then free to be registered anew by anybody. The new registration is not a renewal of the old domain name. It is generally a new and separate contract made with the domain name registrar. He said that there can be an exception to this rule, that is, if a domain name registrar has a relationship with a domain name auction house. In this example, a domain name registrar may renew the domain name and transfer it to the auction house for later sale. Given the presence of the reactivation period, he believed that this domain may have gone part of the way through that process and then subsequently expired and became available for anyone to register. 162 Mr Johnson conducted a review on 13 May 2014 and 15 May 2014 of records held at Archive.org for the roywestonpd.com domain name. Archive.org stores copies of webpages found at a particular domain name on various past dates. He produced those copies. He said that the material showed that: (a) on or about 22 February 2012, the website found at roywestonpd.com was a website promoting Harcourts Projects; (b) from around 25 April 2013 to 5 January 2014, the domain name redirected to a website hosted at harcourts.com.au which promoted Harcourts Group real estate. None of the records indicated any reference to 'Roy Weston' on the Harcourts Project website; (c) from 6 February 2005 to 2012, the website found at roywestonpd.com was a website promoting Roy Weston project development. An extract from the website as at 2005 stated that 'Roy Weston Project Development are the appointed Project Managers and Selling Agents for urban and rural residential Estates in both metropolitan Perth and country Western Australia'; (d) between 9 February 2007 and 9 June 2007, the website found at roywestonpd.com appeared to change from Roy Weston (in red) to Harcourts Projects (in blue); and (e) from 15 June 2006 to 22 February 2012, if a user clicked on the 'buttons' at the top of the webpage, the user was diverted from roywestonpd.com to the equivalent webpage at harcourts.com.au. For example, the 'About Us' button at the top of the page from 15 June 2006 to 22 February 2012 diverts to http://www.hartcourts.com.au/content/aboutus/. 163 There is only one record for roywestonpd.com for the year 2012, dated 22 February 2012. The records for 25 April 2013 to 23 June 2013, 13 August 2013 to 5 January 2014 are all redirected to the website at http://www.harcourts.com.au/. 164 In relation to royweston.com.au, a similar exercise with similar results was conducted. 165 On 14 May 2014, Mr Johnson used DomainTools to review the Who Is history of royweston.com.au, which informed him that from around 31 October 2006 to the present date, the domain name has been registered to Publishing Australia Pty Ltd. On or around 22 August 2009, the domain name had expired. This meant that the domain name was not renewed on or before the expiry date. 166 From around 14 February 2007 to around 22 August 2009, the domain name was registered to Roy Weston Limited. 167 Mr Johnson explained that the Who Is records showed that the royweston.com.au domain name had expired on or about 22 August 2009. When a .com.au domain name expires, it stops working, which will mean that both the website hosted on the domain name and also any email addresses using the domain name would also stop working. If the domain name is actively being used, the users would immediately notice when it has expired. 168 When a '.com.au' domain name expires, it goes through a different process than a .com domain name. The process is outlined in the Domain Name Renewal Expiry and Deletion Policy. Copies of the policy were produced. Once a domain name goes through the expiry process, Mr Johnson explained that it will be free to be registered anew by anybody. Again, the new registration is not a renewal of the old domain name, but a new and separate contract made with the domain name registrar. 169 On 14 May 2014, Mr Johnson reviewed the records held at Archive.org for the royweston.com.au domain name. Archive.org stores copies of webpages found at a particular domain name on various past dates. Mr Johnson produced records which appeared to show that from around 14 November 1996 to around 21 March 2007, 'royweston.com.au' was promoting Roy Weston Real Estate. There were two small Harcourts graphics at the royweston.com.au site on 21 March 2007. From 29 January 2008 to 23 April 2009, the domain name hosted a banner advert and then redirected to a website hosted at Harcourts.com.au which promoted the Harcourts Group. 170 Mr Johnson conducted Google searches for 'Roy Weston' and attached the first four pages of that search. He assessed the search results on the first page as being entirely about Roy Weston real estate across multiple locations. This comprised ten results and three google 'places' listings with reference to a map. Search results on the second page showed ten results with one referencing 'western.harcourts.com.au' entitled 'Roy Weston Medal Honours'. Search results on the third page were different from the previous pages, which focussed on real estate websites. For example, there was a LinkedIn page to personal profiles, a trade mark from IP Australia and an ABC article on Roy Weston, a PerthNow article on Roy Weston and one reference to news.harcourts.net in relation to the award of a Roy Weston Medal. The search results on the fourth page contained both references to real estate and members of the public using the name 'Roy Weston'. 171 Mr Johnson was also cross-examined on his understanding of the Wayback Machine. He accepted that the Wayback Machine can be unreliable. 5.9 Mr Kempton 172 Mr Kempton, who was the CEO of Harcourts WA during the 'red to blue' change of brands process, in evidence in chief, confirmed the evidence of Mr Taylor in relation to the correspondence exchanges. He was called by RWN. His evidence was that he also arranged for the cancellation of the domain names which were the subject matter of that correspondence, that is, the name roywestonnominees.com.au. Mr Kempton in cross-examination accepted that he had difficulty in recalling events which took place a very long time ago. He recalled that Deacons were retained in respect of Mr Taylor and his exiting the franchise. His memory had not been refreshed at the time of giving his statement with all of the contemporaneous documents. He accepted that the demand made by Deacons in the 24 January 2007 letter concerning the expression 'Roy Weston Nominees, The Trusted Name in Real Estate', was quite irreconcilable with the unsigned 7/12 letter setting out that expression in its logo. He made it clear that Mr Green was the decision-maker on the trade mark issues, not him. 173 There is no reason to think that Mr Kempton was other than an honest witness. RWN relied heavily upon his corroboration of Mr Taylor's evidence and the oral approval Mr Taylor says that Mr Kempton gave him. But Mr Kempton had not been taken to the entirety of the correspondence. His recollection of the events which occurred some years ago had been refreshed by reference only to some of the correspondence. In any discussion he had with Mr Taylor at the time the high likelihood is that he made it clear that any agreement or lack of opposition on his part would be subject to the approval of his superior, Mr Green. Mr Kempton appeared to accept this, which is apparent from the following exchanges that took place in cross-examination: Yes. Okay. And so if we come back to 700, then. If – I suggest that if at this time or around this time Harcourts had been provided with a copy of that logo, that the position – it would be inconsistent with the position stated in the Deacons letter of 24 January 2007 for anyone at Harcourts to say that use of that logo would be okay. Do you agree with that?---Yes. Because they're the very same words, aren't they?---Yes. And you didn't say that, did you?---Say what, sorry? You didn't say to anyone that it would be okay – well, you didn't say to Des in December '06 or January '07 that it would be okay to use those words "Roy Weston Nominees: The Trusted Name in Real Estate", did you?---That's not how I remember it. I remember receiving the letter and I remember asking for examples of his logo and that to pass on to Harcourts. Yes. Yes. To pass on to Mike – yes. And did you make it clear when you spoke to Des that anything Des sent you would have to go to Mike?---Absolutely. I was the go-to. And that was what you said to Des. You had to say to Des, "Give them to me and I will speak to Mike." Correct?---Would have been consistent with what was going on, yes. Yes. And so when you look at the letter of 24 January 2007, it's the case, isn't it, that there is no way that you would have gone back to Des and said that it is okay to use the logo at page 700, is there – just no way?---That's not how I remember it. No. Yes. But now you look at it, do you agree with me?---There's definitely inconsistencies there in what I – how I remember things to what's in front of me. Yes. Okay. Once again, I'm not being critical. But these documents weren't provided to you at the time you did this affidavit, were they?---No. …………………. MR DUGGAN: You've [sic] – now looking at those documents that you have in front of you, you agree with me that they put an entirely different complexion on what happened in respect of the words "Roy Weston Nominees: The Trusted Name in Real Estate", don't you?---How I remember it and what I'm seeing here – there is inconsistencies. Yes. And there are inconsistencies not just with this, but with the domain name as well. Correct?---Unfortunately, I think I'm in a position where those things happened using my account and my name is on there and I'm being asked to remember things that I didn't actually physically do. So that makes it even harder. Yes. And you just don't have, I suggest, a recollection about these events at all, do you?---Vague. Yes?---It's vague. Yes. But what you do remember is that you would have gone to Mike. Correct?---Correct. Yes. And you would have told Mike about what was going on. You would have told him about the – would you have told him about the Deacons letters?---He would have been included on those. Yes?---Yes. So it's pretty clear what Mike's position is, isn't it?---Correct. Yes. He's saying you can't apply to register the name "Roy Weston Nominees: The Trusted Name in Real Estate", isn't he?---That would seem right. Yes. Yes. And he would have conveyed that to you. Correct?---He – I'm guessing. I can't remember him saying those exact words, but --- Yes? – it could be probable. Yes. ………… So you would accurately relay to Des anything that Mike told you about this. Correct?---That would be consistent, yes, with how I was operating at the time. (emphasis added) 174 It appeared to me that Mr Kempton did his best to recall events as well as possible. But given the significant passage of time, at least some seven years, it is unsurprising (as it would be for anyone), that his recollection of this detail especially when he was refreshed on only parts of the surrounding circumstances was not perfect, as Mr Kempton readily agreed. 5.10 Mr Wellstead 175 Mr Wellstead bought the Roy Weston Bassendean franchise from the Taylors. He, like the Taylors, chose not to rebrand to Harcourts. He gave evidence that he had never seen the name 'Roy Weston' used by Harcourts in connection with the business of selling real estate since the rebranding. He also gave evidence of discussions that he had with M/s Musca which I have already summarised above (at [93]). Mr Wellstead was not required for cross-examination. 6. CONSIDERATION 6.1 RWN's claim 176 Very belatedly, on notification of pending delivery of judgment, and without confirmation of approval from Harcourts WA, the solicitors for RWN submitted that I should review and consider the following cases as they were said to be relevant to the issues in this proceeding: Matzka v The Mind Gym Ltd (2006) 68 IPR 339; Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554; and Maier v ASOS Plc [2015] EWCA Civ 220. I note, as did the solicitors for RWN, that an appeal of the decision in Accor was very recently heard by the Full Federal Court and judgment reserved. Nevertheless, I address the relevance of each of these cases in connection with the various aspects of RWN's claim below. 6.1.1 Removal of the 'Roy Weston' trade mark from the Register 6.1.1.1 Non-use 177 RWN was not required to file pleadings in relation to the RWN non-use proceedings that were transferred from IP Australia. The claim can be succinctly stated as being an application for the Harcourts Trade Marks to be removed from the Register as Harcourts WA has, allegedly, not made use of the Harcourts Trade Marks in Australia or in good faith during the relevant period, being 22 June 2008 through to 22 June 2011 (non-use period), pursuant to s 92(4)(b) TMA. 178 RWN argues that, in relation to the rebranding accompanied by 'fireworks' and a great deal of publicity, there is no hint that Harcourts WA had any intention of retaining any connection with the Roy Weston brand or trade mark. In other words, it was a 'scorched earth' policy when Harcourts switched 'from red to blue'. There was not any hint in any documentation whatsoever of a dual branding strategy. 'That was the end of Roy Weston'. 179 The issue is whether Harcourts WA has rebutted the allegation of non-use by RWN through the production of evidence which establishes that the Harcourts Trade Marks, or the Harcourts Trade Marks with additions or alterations not substantially affecting its identity, was used in good faith during the non-use period: TMA, s 100(3)(a). 180 Whether the mark has been 'used' for the purposes of the TMA requires consideration of whether there has been any use to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person (s 17 TMA). 181 In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd (2014) 311 ALR 207 the Full Court (Besanko, Yates and Mortimer JJ) said (at [36]-[37]): 36 In Coca Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, the Full Court, after referring to Shell, noted that s 120 of the Act (unlike the corresponding provisions of the 1955 Act) expressly incorporates the requirement that "use" is limited to "use as a trade mark". The Full Court (at [19]) observed: … Use "as a trade mark" is use of the mark as a "badge of origin" in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: see Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 341, 351. That is the concept embodied in the definition of "trade mark" in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from good so dealt with by someone else. 37 In Nature's Blend Pty Ltd v Nestle Australia Ltd (2010) 272 ALR 487, the Full Court [Stone, Gordon and McKerracher JJ] (at [19]) summarised the relevant principles in the following terms: 1. Use as a trade mark is use of the mark as a "badge of origin", a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19]; E & J Gallo Winery v Lion Nathan Australia Pty Limited (2010) 265 ALR 645 at [43]. 2. A mark may contain descriptive elements but still be a "badge of origin": Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347- 348; Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; Aldi Stores Ltd Partnership v Frito-Lay Trading GmbH (2001) 54 IPR 344 at [60]. 3. The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422. 4. The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use "as a trade mark": Johnson & Johnson at FCR 347 per Gummow J; Shell at CLR 422. 5. Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or "context") of the impugned words: Johnson & Johnson at FCR 347; Anheuser-Busch Inc v Budejovický Budvar (2002) 56 IPR 182. 6. In determining the nature and purpose of the impugned words, the Court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited. (emphasis added) 182 As is made clear in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited (2010) 241 CLR 144 (at [41]), that 'use' does not have to be extensive (at [64]) (footnotes omitted): Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute "ordinary and genuine" use judged by commercial standards. It has been recognised by the Court of Justice of the European Communities, dealing with the expression "genuine use" as used in Arts 10 and 12 of Directive 89/104 of the Council of the European Communities, that use of a mark "need not … always be quantitatively significant for it to be deemed genuine". ... 183 In Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH (2001) 190 ALR 185 (at [78]), Hill and Lindgren J (Conti J dissenting) noted that: ... A subjective intention to use a sign as a trade mark is not probative of the objective fact of use of it as a trade mark use (cf Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 192B-C per Gummow J), just as a subjective intention not to use a sign as a trade mark is not probative of the objective fact of non-use of it as a trade mark (cf Sports Break Travel Pty Ltd v P & O Holidays Ltd (2001) 50 IPR 51 (FCA/Burchett J) at [14]). 184 The name 'Roy Weston' is registered in respect of Class number 36, 'real estate affairs'. Harcourts WA was a franchise with franchise agreements involving 50 to 60 franchisees at the relevant time. By cl 7 of the 2002 Franchise Agreement, the franchisors were required to provide services to the franchisees. Those services include, amongst other things, the promotion of individual franchisees. 185 RWN says that there is no sufficiently probative evidence to show actual usage in the non-use period. 186 During the non-use period, the Harcourts WA case is that the 'Roy Weston' name was used by Harcourts WA 'in the course of trade' for the purposes of s 17 TMA in the following ways: (a) on a banner advert at the domain name www.royweston.com.au by stating that 'Roy Weston is now proudly part of the Harcourts Real Estate Group', although this banner itself did not contain any redirection; (b) in the domain name to direct internet users from the website at www.royweston.com.au to the website with the domain name www.harcourts.com.au; (c) in the White Pages to redirect consumers to the Harcourts listing; and (d) to promote and advertise the Roy Weston Medal at the Annual Awards night and the Roy Weston Wall of Fame. 6.1.1.2 The websites 187 As to the websites, roywestonpd.com.au and royweston.com.au, RWN contends that the evidence surrounding usage of these sites by way of the Wayback Machine search engine is unsatisfactory. In King Par LLC v Brosnan Golf Pty Ltd [2014] FCA 795 per Greenwood J (at [168]) his Honour concluded that he could not rely upon any of the images referred to in evidence by the owner in that case because he could not be satisfied of the accuracy of the dates of archive of those images on any of the websites to which they were attributed by the Wayback Machine search engine. 188 RWN argues that just because roywestonpd.com.au points to a Harcourts website, that is not necessarily use of 'Roy Weston' as a trade mark. 189 RWN relies upon Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450, as authority for the contention that merely owning a domain name is not trade mark use. Rather, RWN says that according to this authority, it is necessary to examine the website to see what the nature of the use is and whether it amounts to trade mark use. However, I note that Reeves J also said (at [50(g)]) that: … if the registered domain name is linked to a website that contains advertising material that promotes goods or services in relation to which the trade mark is registered, this combination of use could constitute use as a trade mark under s 120 of the [TMA]. … 190 The solicitors for RWN also submit that Accor is relevant to whether domain name registration constitutes 'use' in the relevant sense. However, the passages cited by the solicitors do not encapsulate the enunciation of any general principles by Rangiah J. Rather, Rangiah J was conducting a fact-specific analysis that does not influence the present inquiry. 191 If anything, his Honour's summary in Accor (at [82]-[84]) of the principles relating to whether a domain name registration amounts to 'use' supports Harcourts WA's contentions in saying: 82 In Mantra Group v Tailly, Reeves J said at [50]: [I]f the registered domain name is linked to a website that contains advertising material that promotes goods or services in relation to which the trade mark is registered, this combination of use could constitute use as a trade mark under s 120 of the [TMA]. 83 In Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd (2012) 98 IPR 1, Reeves J was concerned with a case in which the respondent had registered domain names that incorporated or were similar to the applicant's registered trade marks and linked those domain names to a website which advertised the respondent's goods and services. His Honour held at [24]: I consider this is trade mark use of those signs or words. That is so because this use of a domain name to redirect potential customers to a website displaying one's goods and services is analogous to using those words as a sign on the front of a shop to indicate the goods and services that are sold within. 84 When deciding whether domain names are substantially identical to the trade marks, the prefix "www" and the suffix ".com" or ".com.au" do not substantially affect the identity of the trade mark: The Architects (Australia) Pty Ltd v Witty Consultants Pty Ltd [2002] QSC 139 at [21] per Chesterman J, Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 at [155] per Kenny J. 192 RWN contends that simply going to the Wayback Machine and taking a 'screen dump' is not sufficient to discharge the onus upon Harcourts WA under s 100 TMA for the same reasons that this practice was rejected in King Par by Greenwood J. It also argues that, in any event, it is quite unclear as to whether this is promotion or usage of 'Roy Weston', as distinct from 'Harcourts'. What it says is 'Roy Weston is now part of Harcourts Real Estate Group'. RWN submits that this form of redirection effectively says: there is nothing left of Roy Weston. It is all Harcourts. This is, RWN argues, all consistent with the 'scorched earth policy' in implementing the change from 'Roy Weston' to 'Harcourts'. Therefore, RWN says, there has been no relevant use of by Harcourts WA within the non-use period. 193 In the present case, consistently with Nature's Blend Pty Ltd v Nestle Australia Ltd (2010) 272 ALR 487 and Anheuser-Bush Inc v Budejovický Budvar (2002) 56 IPR 182 (quoted above at [181]), Harcourts WA ask that an assessment be made of what a customer will determine when they look at the website. 194 In relation to the banner advert, the evidence is that during the period from the commencement of the non-use period on 22 June 2008 until at least 29 January 2009, Harcourts WA hosted a banner advert at www.royweston.com.au. Harcourts WA say that the use of the words 'Roy Weston' in that banner advert constitutes trade mark usage. The name was used as a mark to distinguish the services offered by Harcourts WA in contrast to those of other traders. 195 RWN suggests that the pages on Archive.org could be unreliable where the archived records are incomplete. I accept this submission. But I also find that in this case there was other plausible secondary support for the usage of the banner advert at the domain name www.royweston.com.au during the non-use period. Mr Moore commenced with Harcourts WA as its CEO in March 2008. In cross-examination, Mr Moore gave evidence, which I accept, that he recalled an advertising campaign involving the 'flying man' as part of a broader campaign. The reference to the 'flying man' or the 'man in the sky' was to an image already described above at [102]. As previously indicated, this is the archived picture produced by the Wayback Machine when viewers sought to search 'www.royweston.com.au/'. 196 There was a further use of the name 'Roy Weston' in the domain name coupled with the redirection of a consumer from one website to another. It is a different instance of use from the hosting of the advert banner with the words 'Roy Weston'. Use of a mark for the purpose of redirecting consumers in this way has been held to constitute trade mark usage in a number of trade mark infringement cases: see Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd (2012) [2012] FCA 281 per Reeves J (at 8); Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544 per Perram J; Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 per Kenny J; and Mantra Group (at [53]). 197 In fact, there is evidence that the redirection continued during the non-use period at around the time that Mr Taylor's statutory declaration was prepared, being 12 February 2009: affidavit of M/s Furse sworn 12 February 2014. 198 In Edgetec, the respondent had registered domain names that incorporated or were similar to the applicant's registered trade marks and linked those domain names to a website which advertised the respondent's goods and services. Reeves J held (at [24]): I consider this is trade mark use of those signs or words. That is so because this use of a domain name to redirect potential customers to a website displaying one's goods and services is analogous to using those words as a sign on the front of a shop to indicate the goods and services that are sold within. 199 Although the present case differs slightly - Reeves J was speaking of infringement through use of a trade mark, whereas I am concerned with the rebuttal of non-use of a trade mark through the registration of domain names - in my view, the statement of Reeves J in Edgetec is applicable. It further indicates that the banner advert and redirection constitute use of the 'Roy Weston' trade mark by Harcourts WA. 200 In accordance with Mantra Group, on examining the website to ascertain the nature of the use, I am unable to agree with the contention that the redirections are, in this instance, simply saying that Roy Weston is out of business. Rather, in my view, they are saying that Harcourts WA's business now includes the business of Roy Weston. 6.1.1.3 The White pages 201 RWN argues that the same impression as is given by the websites, (the argument being outlined above at [188]) is given by the White Pages entry, which says there is nothing at Roy Weston. Instead, RWN says, you have to go to 'Harcourts' to find a telephone number for Harcourts WA. 202 RWN relies upon Matzka, in which a Delegate of the Registrar of Trade Marks found (at [17]) that he was 'not satisfied' that registration of a domain name and White Pages entries including a name the subject of a trade mark dispute 'constitute trade mark use for the purposes of the [TMA]'. 203 In the same vein, RWN relies upon Accor, in which Rangiah J was not satisfied (at [438]) that telephone directory listings in the White Pages constituted 'use' of the relevant signs. In that case, Rangiah J was concerned with an allegation by the applicants that the first respondent had caused entries to be included in the White Pages and Yellow Pages which infringed the applicants' trade marks. Notably, his Honour found that the evidence did not establish that the first or second respondent (or any servant thereof) caused the entries to be made. This is distinguishable from the present case because, first, Harcourts WA adduces evidence of entries in the White Pages in connection with rebuttal of the presumption of non-use, rather than in support of the converse proposition that the entries in the White Pages infringed any registered trade mark. Secondly, Mrs Musca deposes to the fact that Harcourts WA placed listings in the White Pages in the relevant editions. 204 As the Full Federal Court (Heerey, Allsop and Young JJ) said in Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97 (at [77]): Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. … See also Aldi Stores Ltd per Hill and Lindgren JJ (at [30]). 205 That entries in the White Pages are capable of being (objectively) considered evidence of 'use' of a name or term is evidenced by the following cases: Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd (2011) 91 IPR 416 (at [30]); Two Men and a Truck Australia Pty Ltd v Three Men and a Truck Removals and Storage Pty Ltd [2008] FMCA 1333 (at [25]); VIP Australia Pty Ltd v Bates (1998) 43 IPR 209 (at 214); and Re Application by Eltham Woodwind (Importing) Pty Ltd (1996) 34 IPR 668 (at 671). 206 In my view, there is a further instance of trade mark usage in connection with the White Pages during the non-use period with the redirection of readers of the White Pages in the 2008/2009 White Pages. 'Roy Weston' appears under 'R' in the White Pages. It redirects those looking for 'Roy Weston' to the Harcourts WA page. Harcourts WA entered into a contract with Sensis for the provision of the advertising services in the White Pages on 5 June 2008. The White Pages were distributed by Sensis in October 2008. They remained current for the ensuing year. During that period the redirection continued to constitute a usage of a commercial character. This commercial usage was, as with the other White Pages entries, necessarily 'in the course of trade' as that was inherently its very purpose: to capture the business or trade of those seeking to possibly transact with Roy Weston. 207 There is, accordingly, in my view, established commercial 'use' of the 'Roy Weston' trade mark by Harcourts WA on both the internet and in the White Pages within the meaning of s 17 TMA that defeats RWN's non-use claim. 208 In the belated email sent to chambers (referred to above at [176]), solicitors for RWN referred to Accor and Maier, in which the scope of the trade mark category were at issue. Kitchin LJ summarised the general principle in England in Maier (at [56]) as: … a proprietor should not be allowed to monopolise the use of a trade mark in relation to a general category of goods or services simply because he has used it in relation to a few of them. The mark should remain registered only in respect of those goods and services for which it has been used. 209 The solicitors for RWN appear to suggest that, even if Harcourts WA has used the Harcourts Trade Marks, the Court should form a value judgment as to the appropriate specification of the trade mark having regard to the use which has been made. However, this argument was not developed at trial, nor at the time the email was sent when I was finalising my judgment. Not only was there considerable delay in RWN raising this contention, but RWN did not seek the leave of the Court to amend its application, nor did it provide any evidence of having sought approval from Harcourts WA. The analysis of the scope of the trade mark specification by Rangiah J in Accor, particularly in the passage cited in the email sent by the solicitors for RWN, was fact-specific and not of wider import, especially in the present case. See, for example, Accor (at 63]) where Rangiah J explicitly states that his consideration of the classes of trade marks was 'for the purposes of [that] case'. In addition, Maier (a majority decision of the English Court of Appeal, from which the English Supreme Court refused leave to appeal) does not appear to have received any judicial consideration in Australia, possibly because the relevant key passages (being [56]-[65]) consider relevant provisions of the EC trade mark legislation. Even if it be assumed that such provisions are mirrored in Australia, reliance on whatever precisely the relevant argument may be is now far too late and will not be accepted. 6.1.1.4 The Roy Weston Medal 210 The Roy Weston Medal evidence is not so convincing. 211 RWN contends that the sort of incidental use which Harcourts WA depends upon to defend the RWN non-use claim is not sufficient to establish use in connection with trade as a badge of origin of services: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (at 422). 212 In Shell, Kitto J (Dixon CJ, Taylor and Owen JJ agreeing) held that the depiction of animated fuel drops in a television advertisement for Shell was not trade mark usage. Kitto J noted that the only purpose of the pictures of animated fuel drops was that no viewer would ever pick out any of the individual scenes in which the man resembles Esso's trade marks and say that there was something that Shell was 'showing me as being a mark by which I could identify Shell petrol'. His Honour continued (at 425): And one may fairly affirm with even greater confidence that the viewer would never infer from the films that every one of the forms which the oil drop figure takes appears there as being a mark which has been chosen to serve the specific purpose of branding petrol in reference to its origin. No doubt if, later, the viewer were to come across [Esso's] trade mark used in relation to petrol his recollection of the films might lead him to think that [Shell], taking advantage of a reputation created for the oil drop figure by means of the films, had adopted the figure, in one of its forms, as a mark for its petrol. But that would be quite a different matter from inferring, while sitting in front of his television set, that the figure in one or more, some or all, of its exhibited forms was being placed before him there as a trade mark for Shell petrol. 213 Kitto J noted (at 421) that the usage of the animated petrol figure was not sufficient to show, in the language of s 17 TMA, that it was used 'in the course of trade'. 214 RWN argues in relation to the Roy Weston Medal, this is, again, not usage in the course of trade. The Roy Weston Medal is not a trade usage but the bestowal of an honour or prize for achievements by reference to a revered identity such as the Norm Smith Medal or the Brownlow Medal in sport. Receiving or promoting the medal in commemoration of a revered identity does not mean that you are trading as that revered identify. This occurs at the Harcourts WA Gala Dinner and Awards Night, but nothing done on that occasion is used to indicate the origin of services as being real estate affairs. 215 The Roy Weston Medal is only one of a number of medals given out at the Harcourts WA Gala Dinner and Awards Night. In all of the advertising material and editorial material surrounding the Roy Weston Medal, the trade mark actually used is Harcourts. 216 In relation to the evidence on the Wall of Fame, there was a debate as to the degree of prominence from the public's perspective of the Roy Weston Wall of Fame. It is located behind the reception in the head office for Harcourts WA, RWN says that it fails the test of a trade mark because it is not something available to the public. By definition, a trade mark has to be available in the course of trade to indicate the origin of services. The Wall of Fame - located behind a receptionist who would have to give permission to have access to read it - is not something which is accessible to and open to the public. Having heard a substantial amount of evidence on this topic, I accept RWN's submission and find that the Wall of Fame itself is not prominent from the pubic perspective. 217 RWN accepts that the recipients of a Roy Weston Medal are entitled to be justly proud of their recognition and personally display them in their offices, but contends that this is, again, not sufficient to constitute exposure to the public in the trade mark sense. 218 I will deal with the response by Harcourts WA below, but, in my view, there is much to be said for RWN's submission in relation to the Roy Weston Medal. 219 Harcourts WA say that 'Roy Weston' was used as a trade mark when referred to in the promotion and advertising of the Roy Weston Medal. The Roy Weston Medal is promoted in various places, including to the franchise network, to the general public and The Sunday Times, and in the Harcourts Bluebook, which is available on the website. 220 On balance though, I consider, for the reasons discussed above, that the arguments advanced by RWN in connection with the Roy Weston Medal are correct. This is not a commercial trading usage of a mark in the sense relevant for the TMA. It is much more in line with the Norm Smith Medal kind of usage, where the name ('Roy Weston', in this case) is acknowledged within the award of the medal (to Harcourts WA recipients, in this case). I am not satisfied that the evidence associated with the award of the Roy Weston Medal satisfies the requirement of 'use'. While I accept RWN's argument on this usage of 'Roy Weston', the usage of the banner advert, the domain name and the White Pages in the manner in which each use is made to be sufficient, in each instance, to constitute usage in good faith under s 100(3)(a) TMA. In those circumstances, the non-use application by RWN will not succeed. 6.1.1.5 Exercise of discretion to determine non-use application 221 There are further discretionary aspects involved in the RWN non-use application. The Court has a discretion under s 101(3) of the TMA as to whether or not to refuse the removal of a trade mark, even when the grounds for its removal have been established. 222 The TMA does not stipulate specific criteria in respect of the exercise of the discretion. It is not the case that it must only be exercised in 'exceptional circumstances': Kowa Company Ltd v N V Organon (2005) 223 ALR 27 per Lander J (at [98]). There is a helpful analysis in his Honour's reasons (at [92] to [99]): 92 The applicant also submitted that the discretion should not be exercised in the respondent's favour on the basis of its private interests, as the guiding principle behind the discretion is public interest, particularly in the integrity of the Register: NSW Dairy Corporation v Murray-Goulburn Co-Operative Company (1989) 14 IPR 75; Upjohn Co v Sanofi (1998) 42 IPR 576 at 585 citing Re J Lyons & Coy Ltd's Application (1959) 76 RPC 120 ('Lyons'). 93 The two subsections raise two different issues. Section 101(2) allows the Court to order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates. Subsection 101(2) therefore allows for a partial removal. That is in fact what is sought by the applicant. 94 Section 101(3) provides for a wider discretion which allows the Court not to remove the trade mark from the Register even if the grounds on which the application was made have been established. 95 In Lyons, the Court of Appeal considered s 26 of the English Trade Marks Act 1938 which provided a discretion to refuse an application to remove a mark from the Register 'if it is shown that there has been … during the relevant period … bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered'. 96 Lord Evershed MR said, at 130: 'In my judgement, the terms of the proviso (to the effect that if the use of the mark is shown as there specified, the Tribunal "may refuse the application") carry with them the unavoidable implication that, if such use is not shown, then prima facie the Tribunal ought not to refuse the application. That is not to say that no discretion whatever is left by the use of the word "may" in the second line of the sub-section. Exceptional circumstances may arise, for example from the special nature of the mark, which would make it just to refuse the application even though the proviso were not at all called into play.' 97 That decision was relied upon by the Deputy Registrar of Trade Marks in Upjohn. There are significant differences in the section considered by the Court of Appeal in Lyons and s 101(3). In the English section, regard had to be had to the bona fide use of the trade mark during the relevant period. No such regard is had in s 101(3). It is always dangerous to have regard to a statement of principle in relation to the exercise of a discretion in a section in an Act which is not in pari materia with a section of a second Act for the purpose of considering the way in which a discretion should be exercised in that second Act. 98 In Upjohn it was said that the power may be applied in 'exceptional circumstances'. Subsection 101(3) does not say that. There is no warrant to read the expression 'exceptional circumstances' into the subsection. That would be to give the subsection a construction contrary to its express terms. In my opinion, the discretion which is to be exercised under s 101(3) is to be exercised as the subsection itself says, 'when it is reasonable to do so'. To suggest that the party against whom the non-use has been put in a case such as this should establish exceptional circumstances is to put too high a hurdle in that party's path. 99 In any event, in a consideration of this matter, I am not satisfied that it would be reasonable to not remove the mark from the Register. The respondent's first point must fail for the reasons I have already given. The second point is contrary to the findings of fact which I have made. I do not accept the third point as a matter of fact. There is nothing to suggest that the respondent has been in any way active in relation to other potential indications. On the contrary, the evidence rather suggests that the respondent has sat by and allowed research to occur from time to time in which it has a passing interest. The respondent has had the opportunity, it seems to me, which it seeks now in the fourth point, to pursue those other indications. In my opinion, if I were called upon to exercise a discretion under s 101(3), I would exercise it adversely to the respondent. I would, if the applicant had established the threshold question, have made an order in accordance with the terms of the application. 223 While I am satisfied that the non-use application should be dismissed, if that conclusion is wrong, I believe that the discretion under s 101(3) of the TMA should be exercised to not grant the application the subject of WAD 167 of 2013 proceeding as 'Roy Weston' is a name that has been established through more than 50 years of use. There is no dispute that the first use of it as a trade mark was by Mr Roy Weston personally. There is a clear chain of ownership of the trade mark from Mr Weston to the Roy Weston and Co partnership through to Harcourts. The following criteria were held to apply in similar circumstances in C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561, in which Finn J said (at [169]-[170]): 169 … However, I should indicate that if I am incorrect in the view I have taken on non-use, this case is one in which I would exercise my discretion favourably to the executors under s 101(3) because it is reasonable in the circumstances to do so: on s 101(3) see McHattan v Australian Specialised Vehicle Systems Pty Ltd [1996] 481 FCA 1. 170 There is no evidence that any member of the public has been deceived by the "non-use". The executor's legal title to the mark is unimpeachable. All who have any beneficial interest in the mark (in the members of the Henschke family directly or via their shareholdings) have acquiesced in the actual user. There is no public interest adversely affected as a result of what has occurred: cf Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323 at 345 (a decision under the 1955 TM Act). I can see no useful purpose to be served by removing the trade mark from the register simply for the purpose of, in effect, compelling a fresh application to be made by what I will inexactly call the Henschke interests. The mark is, and will remain, within the family. It should not be disturbed. It should be preserved as an established mark associated with a family and a business that have given it its present national and international standing. See also C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 (at [73]) where this approach was confirmed per Ryan, Branson and Lehane JJ (at [71]-[72]). 224 In the circumstances, were it necessary to decide, I would exercise a discretion to not grant the relief sought by RWN in the non-use proceeding. 6.1.1.6 Abandonment 225 In defence of the Harcourts WA claim, as well as in support of its own non-use claim, RWN contends that Harcourts WA abandoned use of the name 'Roy Weston'. 226 There is a difference between abandonment and non-use. In Marcus v Sabra International Pty Ltd [1995] FCA 35, Burchett J noted (at [16]) that: The question of abandonment requires separate consideration. It is not the law that all rights with respect to a trade mark vanish at once upon a mere discontinuance of its use. The connection in the course of trade denoted by it will not immediately be forgotten. That connection may be valuable, and it remains open to the proprietor to resume the use of the mark. Unless he has actually abandoned the mark, its use by another may amount to an appropriation of the benefit of the good name acquired by the mark over an earlier period of years. These propositions are supported by a number of authorities. In Hassan-el-Madi's Application to Register a Trade Mark (the "Magic Carpet" case) (1954) 71 RPC 348, a mark had been used by the opponents in Lebanon and Syria up to World War II, but not since. Indeed, the only real evidence of an intention to resume its use was the maintenance of registration in those two countries, a matter of no greater significance than the incurring of the expense of formal assignments quite shortly before the relevant date in the present case. Yet, the Court of Appeal declined to regard the mark as having been abandoned, and upheld the opponents' reliance upon it. Sir Raymond Evershed M.R. (as he then was) said (at 356): "There is no evidence which meets the point that this mark was used, and was associated up to the last war with the Opponents in Middle Eastern countries. Having regard to the great reputation of `Rakeb-el-Rih' [the mark], I think for my part that the inference that there is a residual renown in this mark is reasonably well established. At least, for my part, I think the evidence to which I have briefly alluded is persuasive that, having regard to the history of the existing registration, the revival of a mark containing `Bissat-el-Rih' would inevitably lead, in the minds of many persons who are buyers in this trade, and others, to the assumption that this was a revival by the Opponents in some form of the older use or that the Applicant was in some way connected with the business of the Opponents." Jenkins L.J. said (at 357): "(T)hey cannot, in my view, be said to have abandoned the mark, inasmuch as it still remains on the Register in Syria and Lebanon." It will be observed that the word used by Jenkins L.J. was "abandoned", and that in a case involving a failure to use a mark for many years, mere discontinuance was not treated as the equivalent of abandonment. Accordingly, abandonment requires more than proof of slightness of use, or even non-use. 227 There is also a difficulty in this argument in that Harcourts WA used the domain name royweston.com.au to redirect internet users to its website. As in the Solahart case (at [5]), use of the domain name for redirection purposes was sufficient activity to negate a contention of abandonment. 228 While some of the evidence adduced by Harcourts WA on usage is slight, in my view, it is sufficient in totality to count against abandonment. 229 I accept the evidence of the period of dual branding for approximately a year for the purpose of ensuring that the name and mark, 'Roy Weston', would continue to be recognised as badge of origin for Harcourts WA. This evidence came from Mr Moore, who described the media used for that purpose and from Mr Kempton who described the advertisement, including the image of the 'flying man', appearing both in the newspaper and on the royweston.com.au website. Although this evidence was limited and certainly challenged, in my view, there was sufficient evidence to show that there was no abandonment. Evidence of a variety of witnesses for Harcourts WA, including Messrs Moore and Honey and M/s Birrell, supports the conclusion that Harcourts WA has continued to refer to the 'Roy Weston' mark in connection with its promotion of the Harcourts WA business and the business of its franchisees. 230 The abandonment contention for RWN in respect of the 'Roy Weston' name fails. 6.1.2 Removal of 'The House Sold Word In Real Estate' trade mark from the Register 231 Harcourts WA advanced no evidence to support usage of this trade mark and advanced no submissions on the point. In my view, RWN is correct in contending that Harcourts WA has failed to satisfy the burden under s 100 TMA. It should follow, in the ordinary course that 'The House Sold Word in Real Estate' be expunged from the Register. 6.1.3 RWN's cross-claim for removal of Harcourts Trade Marks pursuant to ss 42, 58, 60, 88(2)(c) TMA 232 In the section that follows, I find in favour of Harcourts WA as to the infringement by RWN of the Harcourts Trade Marks. For the reasons discussed generally in my consideration of the arguments I have rejected any suggestion that the Harcourts WA trade mark, 'Roy Weston', is liable to be removed. That infects all aspects of the cross-claim by RWN. Additionally, as can be seen above, the claim by RWN for non-use in respect of the 'Roy Weston' name has failed. 233 As to the cross-claim, RWN contends the Harcourts Trade Marks should be cancelled for various reasons. The first of those reasons is that the use of the Harcourts Trade Marks would be contrary to law within the meaning of s 42 TMA. That is said to be because the Harcourts Trade Marks would be likely to mislead or deceive persons contrary to s 18 ACL. This can be disposed of immediately. It is the conduct of RWN which is likely to mislead or deceive, rather than conduct of Harcourts WA. The reasoning for that appears in the substantive analysis in these reasons. 234 In addition, RWN contends in its cross-claim, that pursuant to s 58 TMA, Harcourts WA are not the owners of the Harcourts Trade Marks and are not entitled to registration. I did not understand this submission. I do not accept it. 235 RWN also, apparently, relies on s 60 TMA. No argument was advanced in support of it. It cannot succeed. 236 In addition, RWN contends that its cross-claim should succeed by virtue of s 88(2)(c). This is the only ground that is developed at all. In written submissions, RWN discusses the principles upon which s 88(2)(c) should apply, but does not, in any sense whatsoever, connect those remarks with the facts in question. There is no prospect of this ground succeeding. 237 The legal content relevant to such grounds has been canvassed in consideration of Harcourts WA's contentions in relation to the RWN claims, but the predominant attack by RWN on the Harcourts Trade Marks related to abandonment and non-use. 238 Other than by listing the grounds in its written submissions, RWN has not developed any arguments in relation to these submissions beyond those I have already addressed in these reasons. I do not, therefore, consider that RWN has established these grounds. 6.1.4 Repudiation 239 RWN says there is no doubt that Roy Weston Pty Ltd's conduct in substituting its name with that of Harcourts constitutes repudiation of the 2002 Franchise Agreement. It relies upon Southern Cross Autoglass Pty Ltd v Protector Glass Industries Pty Ltd [2014] NSWSC 261 per Kunc J (at [123]) where his Honour said: The relevant legal principles are not in doubt (for what follows see Laurinda Pty Limited v Capalaba Park Shopping Centre Pty Limited (1989) 166 CLR 623 at 634, 643, 658 and 664-7; Foran v Wight (1989) 168 CLR 385 at 441). A party will be taken to have repudiated a contract if it manifests the intention no longer to be bound by it or to fulfil it only in a manner substantially inconsistent with that party's obligations and not in any other way. That manifestation may occur before performance is due (known as anticipatory breach) and does not depend upon the existence of an actual intention to repudiate. Rather, the Court looks to how a reasonable person, in the position of the "innocent" party, would view the allegedly repudiatory conduct. 240 That is consistent, RWN argues, with the opinion given by Mr Corby SC to North Bell. In this opinion, Mr Corby SC opined that any doubt about establishing a repudiation 'does not appear to be a real issue in this matter'. Harcourts WA disagree. But, in the end, nothing turns on this point. 241 There is a question as to whether there was an acceptance of the repudiation so as to treat the 2002 Franchise Agreement at an end. RWN argues that the repudiation by Harcourts WA was accepted by its conduct. In this regard, Southern Cross Autoglass makes plain that conduct may suffice. The totality of the correspondence of 7 December 2006 and the discussions between Mr Kempton and Mr Taylor made it plain that Mr Taylor did not propose to rebrand, and Mr Taylor was accepting the repudiation by Harcourts WA: see Southern Cross Autoglass (at [149]-[151]); Holland v Wiltshire (1954) 90 CLR 409, Kitto and Taylor JJ reaching the same conclusion as Dixon CJ (at 416). 242 RWN argues that the repudiation was accepted by conduct. RWN contends that Mr Kempton said that he saw both the unsigned 7/12 letter and the signed 7/12 letter and approved the use of the logo on the former which was 'Roy Weston Nominees' The Trusted Name in Real Estate. RWN says that the letter of 24 January 2007, properly read, does not create any conflict at all because it says that: It has come to our client's attention that on 9 January 2007 you lodged an application to register the words "Roy Weston Nominees, the Trusted Name in Real Estate" as a trade mark for use in connection with the management of real estate and real estate services. 243 It is difficult, in my view, to accept RWN's submission that the evidence supports its plea in this regard. The conduct which was responded to in the closely considered unsigned 7/12 letter was the arrangement for the domain name registration of www.roywestonnominees.com.au to be cancelled in order to enable RWN to register that domain name. In reality, however, that domain name was retained by Harcourts WA. Mr Taylor's attempt to register the same words that appear in the logo in the unsigned 7/12 letter gave rise to the series of letters of demand from Deacons commencing on 24 January 2007. On 15 November 2006, the domain name had already been registered in favour of Roy Weston Pty Ltd. Mr Taylor said he considered to be vindictive action. But whatever it was, plainly, the lodging of the domain name by Harcourts was intended to, and did, have the effect of precluding RWN from using the domain name. 244 Mr Green also made it clear, and I accept, that he would never have approved Mr Taylor using the logo on the unsigned 7/12 letter and using the Roy Weston company name. 245 Harcourts WA positively advance the contention that Mr Taylor did not send a copy of the unsigned 7/12 letter because it is printed on pre-printed stationery prepared by a graphic designer with the name roywestonnom.com.au in circumstances where that domain name had not then been registered to RWN. The evidence was that it was not registered until 25 January 2007, some six weeks later. 246 Mr Taylor, when taken through these matters, was uncertain that the letter was in fact sent on 7 December 2006 and in his cross-examination appeared to accept that it was more likely to send the signed 7/12 letter. 247 The evidence in support of Mr Taylor's contention that he sent the letter is not persuasive. In my view, Mr Taylor is speculating. This is evident from his account that he left it all to his secretary to do and in her wisdom she must have reprinted the letter on pre-printed stationery with a new logo. I do not regard this speculation as being plausible. There is no apparent reason as to why a secretary would have used the contents of another letter, rather than either leaving it blank or having a brief statement saying that the letter was attached so that Harcourts WA could consider the logo. In reality, Mr Taylor's acceptance that he did not have a clear recollection as to whether he gave his secretary a direction to send through the logo to Mr Kempton is undoubtedly correct. 248 Harcourts WA contends that, in effect, the parties mutually agreed to shorten the term until March 2007. In my view, the conduct of Harcourts WA was a repudiation. But, as senior counsel for Harcourts WA observed, for the purposes of the current dispute, little turns on this as the intellectual property obligations under the 2002 Franchise Agreement clearly survived termination of the agreement, even if it was repudiated. Indeed, the same point was made by Mr Corboy SC in his advice. Accordingly, in my view, regardless of how the 2002 Franchise Agreement was terminated or repudiated, the obligations under cl 7.4 and cl 15.1 (discussed above) remained. 249 Limitation points aside, I would be inclined to agree with RWN that the 2002 Franchise Agreement was repudiated by Harcourts WA by virtue of the latter's notification of its complete withdrawal of the Roy Weston Identifications, which was the entire substratum of the Agreement. However, in my view, that does not affect the intellectual property rights which independently survive the 2002 Franchise Agreement. That is, effectively, the end to any question of repudiation. 250 But even if that were not the case, this has also been reinforced from a contractual perspective. Although RWN asserts that the 2002 Franchise Agreement came to an end by reason of Harcourts WA repudiation (which Harcourts WA denies), there is little doubt that on expiry or termination of the 2002 Franchise Agreement pursuant to cl 15.1, RWN was obliged desist from using any of the Roy Weston Identifications, which included the 'Roy Weston name' to revest ownership of any trade marks, business names or other intellectual property which comprised 'Roy Weston Identifications' to cause the name Roy Weston Morley to be transferred to Harcourts WA, to discontinue all use of 'Roy Weston Identifications' and, absent prior consent in writing, to desist from conducting any business under the Roy Weston Identifications coupled with any name. These obligations cover the field of this case. There is no prior consent in writing and RWN did not carry out the obligations under cl 15.4. 251 Assuming there was repudiation, although RWN say that they accepted the repudiation at the time by conduct, such conduct was quite equivocal. It was at the same time seeking approval for certain actions, not accepting a repudiation and suing for damages. Mason J in Sargent v ASL Developments Ltd (1974) 131 CLR 634 said (at 655-656) (footnotes omitted): A person is said to have a right of election when events occur which enable him to exercise alternative and inconsistent rights, i.e. when he has the right to determine an estate or terminate a contract for breach of covenant or contract and the alternative right to insist on the continuation of the estate or the performance of the contract. It matters not whether the right to terminate the contract is conferred by the contract or arises at common law for fundamental breach – in each instance the alternative right to insist on performance creates a right of election. Essential to the making of an election is communication to the party affected by words or conduct of the choice thereby made and it is accepted that once an election is made it cannot be retracted. No doubt this rule has been adopted in the interests of certainty and because it has been thought to be fair as between the parties that the person affected is entitled to know where he stands and that the person electing should not have the opportunity of changing his election and subjecting his adversary to different obligations. 252 There was no communication by RWN of acceptance of repudiation and no conduct which could constitute the same. But any debate as to acceptance or not of a repudiation (or not) is academic in light of the surviving and contractually acknowledged intellectual property rights held by Harcourts WA alone. 6.2 Harcourts WA's claims 253 The case advanced by Harcourts WA is also somewhat all-encompassing, relying on many TMA and other provisions. 6.2.1 Limitation defences 254 In its defence RWN has pleaded the Limitations Act 1935 (WA) in the following terms: 32. As to paragraph 32 of the Further Amended Statement of Claim: … iv. Claims for breach of the 2002 Franchise Agreement are made outside the limitation period and are stature barred. The Respondent denies that the Applicant was entitled to amend its Statement of Claim in this regard outside of the limitation period prescribed by section 38 of the Limitations Act 1935 (WA). … 255 Harcourts WA contends that the wrong legislation is referred to (at (iv)). That was pointed out in its reply (substantially prior to the hearing of the trial), in which Harcourts WA said: 21. As to paragraph 32(iv) of the Amended Defence, the Applicant: … b. says in further answer thereto that: i. the Limitations Act 1935 (WA) does not apply to any cause of action pleaded by the Applicant in paragraph 32 of the Applicant's Further Amended Statement of Claim; … 256 The pleadings were filed in September 2012 in the Harcourts WA proceeding. I accept Harcourts WA's submission that at that date the pleading would be within the limitation period provided by the relevant statute, being s 13 of the new Limitation Act 2005 (WA). 257 I was informed during the hearing RWN had foreshadowed to Harcourts WA that it would apply to amend its pleading. I was informed that any such application would be opposed. 258 RWN has not expanded upon its pleading nor addressed specific argument on the limitation period. Assuming that Harcourts WA was not taken by surprise by the fact that reliance would be placed on the latter piece of legislation, nonetheless deferring any amendment until mid-trial and seeking to pursue it in circumstances where Harcourts WA might well have other responses to make is too late. 259 By virtue of an amendment made by Harcourts WA, with leave, the contractual claim it pursued for breach of the 2002 Franchise Agreement was, in my view, brought effectively at the time of the pleading it amended so that it was brought within time. I gave RWN the opportunity to challenge my preliminary views on that topic, but RWN did not pursue it. The position may be different under r 16.5(1) of the Federal Court Rules 2011 (Cth) where an amendment is not by leave but simply by consent, but that was not the case here. Harcourts WA was entitled to proceed with its case on the basis the limitation defence raised by RWN was inapplicable as it relied upon the wrong statute and that the effect of the amendment brought by Harcourts WA was to bring its contractual claim within time. 260 While I was unclear as to whether any limitation defence was maintained, it cannot, in my view, succeed. 6.2.2 Cancellation of the RWN Trade Marks 261 Harcourts WA applies for the cancellation of the RWN Trade Marks on the basis of s 88(1) TMA, which provides that an application may be made on the basis of any of the grounds on which registration of the trade mark could have been opposed under the TMA, pursuant to s 88(2)(a). Harcourts WA contends that there were five grounds upon which RWN's application for the RWN Trade Marks could have been opposed. Although they have been previously referred to, they are, for convenience, repeated briefly: (1) Section 42(b) TMA – that the application to register the marks ought not to be accepted as both applications were 'contrary to law', in accordance with s 57 TMA; (2) Section 58 TMA – that RWN was not the owner of the RWN Trade Marks; (3) Section 60 TMA – that, because Harcourts WA's reputation in Australia prior to RWN's application for registration of the RWN Trade Marks, RWN's registration of the RWN Trade Marks was 'likely to deceive or cause confusion'; (4) Section 62(b) TMA – that the RWN Trade Marks were accepted for registration on the basis of evidence or representations that were false in material particulars; and (5) Section 62A TMA – that each of the applications made by RWN to register the RWN Trade Marks were made in bad faith. 262 I will deal with these in the same sequence. 6.2.3 'Contrary to law' (s 57 TMA) 263 Dealing with the first of these propositions, the question is whether or not RWN's applications for the registration of the RWN Trade Marks was 'contrary to law' pursuant to s 42 TMA because RWN's use of the RWN Trade Marks was in breach of the 2002 Franchise Agreement, specifically cl 7.4 and cl 15.1. For convenience, those provisions are repeated: 7.4 The Franchisee in relation to the Roy Weston Identifications covenants and agrees: (a) Not to sell, transfer, assign, licence, part with possession or cause or permit any encumbrance over or otherwise deal with the Roy Weston Identifications or any part or parts thereof except with the prior written consent of the Franchisor; (b) Not to attach or use the Roy Weston Identifications as part of any company name, business name, trade mark or logo other than in accordance with this Agreement or as authorised by the Franchisor from time to time; (c) To comply with the Franchisor's directions given from time to time in relation to the display and use of the Roy Weston Identifications in such things as stationary and advertisements; (d) To change the Roy Weston Identifications and the manner in which they are displayed and/or used whenever requested by the Franchisor at the Franchisee's expense; (e) To comply with all statutes regulations by-laws and customs and other requirements of any relevant authority relating to the use of the Roy Weston Identifications and to keep them duly registered and renewed as required thereby including but not limited to any requirements under the Business Names Act 1962; and (f) If any permitted transfer of the Roy Weston Identifications occurs pursuant to paragraph 7(4)(a) to secure the signing of a covenant in similar terms to this clause by the proposed Assignee. (g) The Franchisee shall not without the prior consent in writing of the Franchisor conduct any business under the Roy Weston Identifications coupled with its own trading name or with any other name during the term of this Agreement or after the expiration or termination hereof. 15.1 Upon the termination of this Agreement whether by effluxion of time or otherwise (a) All rights and privileges granted to the Franchisee shall immediately cease and terminate; (b) The Franchisee shall refrain from doing anything that would indicate that the Franchisee is or ever was an authorised Franchisee of the Franchisor; (c) The Franchisor may make use of the powers of attorney herein granted in order for the transfer of the Business Name. (d) The Franchisee shall immediately pay to the Franchisor all money payable under this Agreement and the Franchisee shall not be relieved of his/her obligation to pay all amounts owed by it to the Franchisor in any event whatsoever. The Franchise fee calculated on Gross Revenue derived from contracts signed prior to termination but accruing after termination will be a debt payable to the Franchisor upon the Gross Revenue being derived. (e) The Franchisee shall cease immediately and forever desist from using any of the Roy Weston Identifications and Know-How and shall execute all necessary documents and do all things at its sole expense to revest ownership of any Trade Marks, business names or any other intellectual property comprised in the Roy Weston Identifications and Know-How in the Franchisor including (but not limited to): (i) Causing the Business Name to be transferred to the Franchisor or its nominee and the Franchisee for this purpose irrevocably appoints each of the secretary and every director of the Franchisor severally the attorneys of the Franchisee for the purpose of executing those documents as shall be necessary to effect any transfer and to procure its due registration; (ii) Removing at the written request of the Franchisor all boards, signs, signboards and notices and paint over or obliterate any part or parts of the Franchise Location on which Roy Weston Identifications appear; (iii) Discontinuing all use of Roy Weston Identifications and return all stationery and other printed material upon which they appear to the Franchisor or its nominees; (iv) Joining with the Franchisor in application to have the entry of the Franchisee as registered user cancelled at the Trade Marks Office and, for this purpose, doing such acts and signing such papers or documents as may be necessary to secure the cancellation of the Franchisee as a registered user. (f) The Franchisee will immediately return or cause to be returned to the Franchisor all written documents, software, manuals and any other tangible device or medium which embodies the Know-How and/or Roy Weston Identifications whether written, oral or otherwise which are in the Franchisee's or his/her employees' [sic] agents' or contractors' possession, custody or control and all copies of them or any of them. (emphasis added) 264 In Neumann v Sons of the Desert SL [2008] FCA 1183, Ryan J said (at [31]): The phrase "contrary to law" in s 42 of the Act is not limited to breaches of statutory provisions. As observed by Shanahan at 6.125, "it appears any law at all is contemplated, statutory or otherwise." Counsel for the applicant submitted that, if it is clear from the evidence that use of the trade mark by the proprietor would be in breach of contract, then the use would be "contrary to law". I agree that the purported exclusive use by the respondent, at the direction of Mr Galdeano, of the El Niño trade mark would be in breach of the agreements and, accordingly, "contrary to law". 265 Shanahan's Australian Law of Trade Marks and Passing Off, (Law Book Co, 2012, 5th ed) discusses the expression 'contrary to law' under s 42(b) TMA. The authors note that for many years the Registrar asserted incompetence to determine oppositions based on an allegation that the use of a trade mark would be contrary to law, taking the view that only where a superior tribunal had made an appropriate finding of illegality could the registrar find the contrariety to law under s 42(b) TMA or its predecessor. That changed with the decision of Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, where Madgwick J observed that the Registrar could make, and in fact had made, such a finding and was not precluded from taking advice before doing so. The authors of Shanahan's noted that the obligation may even be imposed by foreign law, citing Neumann. Registration has been denied on the basis that the use of the trade mark would contravene Spanish legislation relating to unfair competition and the nature of a fiduciary duty owed by the trade mark applicant to the opponent. RWN suggest that the reference in Shanahan's to Neumann should be taken as suggesting that Shanahan's should not be followed because the remarks of Ryan J were obiter. While I agree that the remarks were obiter, I am unable to discern anything in the text or otherwise that suggests that Neumann should not be followed. More importantly, the point is made in the same passage in Shanahan's that the illegality must arise from the trade mark itself, rather than the particular manner in which the applicant's business has been or will be arranged, citing, inter alia, New South Wales Lotteries Commission v Novamedia BV (2001) 52 IPR 638. 266 I would respectfully agree with the obiter remarks of Ryan J in Neumann, (although, perhaps surprisingly, this point does not appear to have arisen in other cases), where his Honour said (at [31]-[34]): 31 The phrase "contrary to law" in s 42 of the [TMA] is not limited to breaches of statutory provisions. As observed by Shanahan at 6.125, "it appears any law at all is contemplated, statutory or otherwise." Counsel for the applicant submitted that, if it is clear from the evidence that use of the trade mark by the proprietor would be in breach of contract, then the use would be "contrary to law". I agree that the purported exclusive use by the respondent, at the direction of Mr Galdeano, of the El Niño trade mark would be in breach of the agreements and, accordingly, "contrary to law". 32 In his notice of appeal, the applicant also advanced two further substantive grounds in reliance on s 42 of the [TMA], namely that; (a) the use of the El Niño mark would be in breach of Article 5 of the Spanish Unfair Competition Act (the Spanish Act) and the fiduciary duty which Mr Galdeano owed to the applicant; and (b) the use of the El Niño mark would infringe copyright and therefore be contrary to law. The second of these two grounds was not pursued. 33 In support of the first ground, the applicant relied on the evidence of Jose Garrido, a Spanish attorney, to establish that; • 'The relevant agreements between the parties were made in Spain, between Spanish residents and Spanish companies, related to events occurring in Spain and are under the jurisdiction of Spanish law to regulate. • Spanish law implies in all contracts (written and oral) an obligation of good faith; • Article 5 of the Spanish Act "shall apply to acts of unfair competition, if they produce or may produce substantial effects on the Spanish market"; • Mr Galdeano's failure to inform the applicant of the trade mark application is conduct which does not comply with the minimum requirements of good faith in Spanish law; • The filing of the trade mark application in Australia without including the applicant (the co-owner with Mr Galdeano) is conduct which causes tangible damage to the Applicant in Spain, under Spanish law; • Because of the potential damage described, Mr Galdeano's conduct threatens to produce substantial effect on the Spanish market and would contravene the Act; and • Because the applicant does not hold majority ownership in the Spanish trade marks, if Mr Galdeano through the Respondent decided to manufacture goods bearing the trade mark in another country and import them into Spain, the applicant would be prevented from taking action.' 34 Mr Garrido concluded that registration of the mark in Australia by the respondent to the exclusion of the applicant would be contrary to Spanish law, which governs the relationship between the parties. I accept this evidence and therefore consider that the opposition based on s 42 of the Act must also succeed. 267 Alternatively, to overcome this difficulty, RWN asserts there was no breach because Mr Kempton had orally consented to RWN continuing to trade under its corporate name and consented to the continuing use by Mr Taylor of the unregistered trade mark 'Roy Weston'. 268 RWN says that the effect of the franchise agreement that preceded the 2002 Franchise Agreement was that RWN acquired, not just the name 'Roy Weston Nominees', but also the independent reputation which it had developed since commencing early in 1996, not just the rent roll of the business, but all of the assets of the company, including its intangibles, its goodwill and its name. RWN further says that the effect was that, by settlement of that transaction, there were two Roy Weston names (and there have been ever since that time). The 2002 Franchise Agreement deals with the disposition of the name 'Roy Weston Limited', not RWN's reputation, nor RWN's name. In that connection, the Taylors, and RWN have done everything they are obliged to do under the 2002 Franchise Agreement. RWN contends that the Taylors have acted appropriately since they purchased the business by entering into the 2002 Franchise Agreement. They have adhered to the 2002 Franchise Agreement and, since it was repudiated in December 2006 by Harcourts WA, they have taken every step which a prudent, honest businessperson would take, including opening accounts with The Sunday Times and registering their own trade marks. In addition, they asked for and obtained the removal of the 'Harcourts' business name, which was permitted by Harcourts WA. 269 Accordingly, RWN says that from 1996 onwards, RWN and Roy Weston Limited both had goodwill in the name 'Roy Weston'. RWN alone had goodwill in the name 'Roy Weston Nominees' as Roy Weston Limited sold its interest in RWN to the Taylors and the Taylors paid a premium of about $100,000 for the remaining shares in RWN. That is above and beyond the $150,000 paid to JA Bryce 'for the rent roll'. Harcourts WA had the ability to impose conditions on that sale, but they did not do so. Having made that 'election' they cannot seek later to claim that RWN did not enjoy an independent right to the names 'Roy Weston Nominees' and 'Roy Weston'. RWN submits that the name, or part of the name - 'Nominees' - per se is not distinctive, it is merely descriptive. It does not, of itself, attract the attention of a consumer. RWN argues that the only words which are distinctive are 'Roy Weston' and those rights were not extinguished by agreement or otherwise in the 2002 Franchise Agreement because the 2002 Franchise Agreement dealt with Roy Weston Limited's name, not RWN's name. 270 As to Harcourts WA's contention that Mr Taylor's statutory declaration (relevantly set out above at [36]) was untrue, RWN argues that the discussion in about December 2006 between Mr Kempton and Mr Taylor rendered the declaration true in those respects which are challenged by Harcourts WA. This is discussed further below. 271 In accordance with my findings and conclusions above at ([243]-[252]) in connection with whether the 2002 Franchise Agreement was repudiated, whether there was acceptance of that repudiation by conduct and, more importantly, the post-contractual obligations, in my view, it follows that the applications for registration by RWN were 'contrary to law' by reason of breach of the 2002 Franchise Agreement. 6.2.4 Ownership of the RWN Trade Marks (s 58 TMA) 272 RWN contends that it obtained the ownership of the Roy Weston mark in 1996 on acquisition of the Morley Business. RWN therefore maintains that Mr Taylor was justified, as his statutory declaration indicated, in using the RWN Trade Marks. A further debate arises as to whether the information in the statutory declaration, in any event, was sufficient to establish ownership, given that it is necessary to prove that one is a proprietor entitled to the exclusive use of the name in order to substantiate an application to be placed on the Register: Re Hicks Trade Mark (1897) 22 VLR 636 (at 640), subsequently approved by the High Court in Aston v Harlee Manufacturing Co (1960) 103 CLR 391 (at 399-400). 273 Contrary to the contention of RWN, in my view, Harcourts WA remained the true owner of the RWN Trade Marks. The name 'Roy Weston' was associated with the Harcourts' business since its incorporation on 30 January 1985. The 'Roy Weston' name in connection with the real estate affairs was that of Mr Roy Weston personally. Mr Weston commenced using the name 'Roy Weston' in connection with the real estate agency business in 1957 and later traded under the name as part of the unincorporated partnership, Roy Weston and Co, and that partnership expanded the business, granting licences to third parties to use the 'Roy Weston' name and brand as franchisees. Harcourts WA have established that there is a trail of ownership in the trade mark Roy Weston from Mr Weston personally through to the Roy Weston and Co partnership to Roy Weston Pty Ltd, and then to Harcourts WA. When M/s Musca commenced working, there were three partners. Shortly after that, Mr Weston ceased attending the business and the two remaining partners, Mr Park and Mr Newman, were inaugural directors of Harcourts. In that capacity, Harcourts WA became the true owner of the 'Roy Weston' mark. There is no evidence of any assignment to RWN or acquisition of ownership by RWN occurring. There is also no satisfactory evidence to support any transfer of the ownership to RWN. Had the Registrar known all these facts, it is likely that the RWN Trade Marks would not have been accepted for registration in the name of RWN. 274 It is therefore unnecessary to resolve this further argument in light of my conclusions above. 6.2.5 Confusion (s 60 TMA) 275 Harcourts WA argue that, in any event, the 2002 Franchise Agreement aside, at the time of registration and at all times since those dates, use of the RWN Trade Marks by RWN was likely and remains likely to cause confusion sufficient to constitute passing off and a breach of s 18 ACL: see Cadbury Schweppes Pty Ltd v Wal-Mart Stores, Inc (2004) 61 IPR 596. 276 I do not consider the evidence rises to this level. The use is minimal. Although the abandonment and non-use claims have failed, there is no evidence of sufficient use in trade of the name Roy Weston by Harcourts WA to demonstrate any likelihood of confusion within the meaning of s 18 ACL. It follows, in my view, that Harcourt WA's claims with respect to confusion cannot succeed. 6.2.6 Application for the registration of the RWN Trade Marks based on representations false in material particulars (s 62(b) TMA) 277 Harcourts WA also contend that acceptance of the RWN Trade Marks for registration was on the basis of evidence or representations that were false in material particulars pursuant to s 62(b) TMA. It is significant that the RWN Trade Marks were initially rejected by IP Australia because the RWN Trade Marks were substantially identical or deceptively similar to the Harcourts Trade Marks, as they obviously are. In both cases, the difficulty was overcome by provision of statutory declarations. With respect to the trade mark made over 'Roy Weston Nominees the Trusted Name in Real Estate', Mr Taylor filed a statutory declaration sworn on 12 February 2009. With respect to the trade mark made over 'Roy Weston Real Estate', a statutory declaration of Mr Taylor sworn on 27 July 2010 was filed. 278 As to the allegation of falsity, Harcourts WA submit that the following matters stated by Mr Taylor on behalf of RWN in the statutory declarations were inaccurate: (a) from March 1996 to May 1997, Roy Weston Limited permitted RWN to use the 'Roy Weston' name without a licence and without restriction to promote the business of RWN; (b) during that time, RWN was not part of a Roy Weston franchise; and (c) the CEO of Harcourts at the time, Mr Kempton, had given a verbal assurance that Roy Weston could trade using the Roy Weston name. 279 Harcourts WA says further that these statements are inaccurate because: (a) it was always intended that Roy Weston Limited and RWN would have a relationship of franchisor and franchisee; (b) Mr Taylor, as a guarantor, signed a franchise agreement between Roy Weston Limited and RWN, which commenced on 1 April 1996. This franchise agreement contained the conferral of a licence by cl 2(3) and an acknowledgement by RWN that Harcourts had exclusive ownership of the Roy Weston Identifications. Contrary to the RWN submission, these included the Roy Weston name. In particular cl 5(10) of the franchise agreement dated 1 April 1996 reads: The Franchisee acknowledges the Franchisor's exclusive ownership of the Roy Weston Identifications and the Know-How and that the copyright in any part of the Roy Weston Identifications and/or Know-How shall remain the property of the Franchisor. (c) no such assurance was ever given by Mr Kempton. Any discussion which Mr Taylor had with Mr Kempton had to be subject to approval from Mr Green, which I infer was expressed to be so having heard the evidence of both Mr Kempton and Mr Green. Mr Kempton himself made it clear that he would need authority from Mr Green about the matters raised by Mr Taylor in respect of the rebrand; and (d) the letter sent by Deacons on 24 January 2007 makes plain that the opposite position was taken by Harcourts WA at the time, namely, that Harcourts WA opposed the very applications which Mr Taylor was seeking to register on the grounds that to do so was in breach of the 2002 Franchise Agreement and infringement of the Harcourts Trade Marks. 280 Harcourts also stress that the trade mark over 'Roy Weston Real Estate' was not an application to register a trade mark in respect of RWN's company name (on which much emphasis was placed by RWN), but rather to register the name 'Roy Weston Real Estate'. While it had been frequently asserted by RWN that it had a right to use its company name (which Harcourts WA disputes), it had never asserted that it was entitled to use any Roy Weston name other than its company name. In order to achieve the registration, RWN provided information which was false and misleading, Harcourts WA contend. 281 I agree with the contentions of Harcourts WA and the resulting argument that the statutory declarations of Mr Taylor filed in support of RWN's applications for both RWN Trade Marks contained material inaccuracies. 282 The only conclusion available is that, absent these misrepresentations by RWN, the RWN Trade Marks would not have been accepted for registration, particularly viewed against the history which preceded the statutory declarations of Mr Taylor. 283 Accordingly, I find that RWN's application for registration of both RWN Trade Marks was based on representations, false in material particulars, contrary to s 62(b) TMA. 6.2.7 Bad faith (s 62A TMA) 284 In support of the bad faith argument, Harcourts WA contend that RWN's application to register the trade mark over 'Roy Weston Nominees the Trusted Name in Real Estate', which was lodged with IP Australia on 9 January 2007, was at a time when there was a dispute between RWN and Harcourts WA regarding its use of the name 'Roy Weston'. The other RWN Trade Mark, 'Roy Weston Real Estate', was lodged with IP Australia on 10 December 2009. By this time, RWN had received five notices of demand from Deacons disputing RWN's entitlement to register the RWN Trade Marks. 285 I reject this contention. 286 I am not satisfied that Harcourts WA has discharged the evidentiary onus that it bears in proving bad faith on the part of RWN in applying for registration of the RWN Trade Marks. I have found that the information provided was not accurate and, therefore, it was misleading. I am not prepared to eliminate as a reasonable probability that, at some level, there was a genuine misunderstanding. There was a good foundation for a belief that the 2002 Franchise Agreement had been repudiated. There was the acquisition of the Morley Business. A combination of these factors led Mr Taylor to the view that despite the demands being made, he was probably entitled to proceed with the registration. 6.2.8 Infringement of the Harcourts Trade Marks 287 In my view, Harcourts WA has established that RWN has infringed a trade mark by its use of the Harcourts Trade Marks without authority. 288 In CSR Ltd v Resource Capital Australia Pty Ltd (2003) 128 FCR 408 it was held (at [38]) that: the act of obtaining registration of… domain names constituted conduct that was misleading and deceptive or was likely to mislead and deceive persons and breached s 52 of the TPA. 289 The RWN Trade Marks are undoubtedly deceptively similar to the trade mark held by Harcourts WA over 'Roy Weston'. Section 10 TMA defines 'deceptively similar' as follows: For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. 290 There has, therefore, been a breach of s 120(1) and (2). 6.2.9 Passing off or misleading and deceptive conduct on the part of RWN 291 Once again, the acknowledgments under the 2002 Franchise Agreement as to the chain of ownership of the relevant trade marks makes it difficult for RWN to resist these claims. It is not necessary that Harcourts WA demonstrate any subjective intent on the part of RWN to mislead consumers. It is sufficient that Harcourts WA demonstrate that by RWN's conduct using the 'Roy Weston' name since the expiry of the 2002 Franchise Agreement, it has misled consumers into believing that it is associated with the Harcourts WA business. For example, in November 2014, on the www.roywestonrealestate.com website, RWN stated: Welcome to Roy Weston Real Estate. For over 50 years the name Roy Weston has been the trusted name in real estate in Western Australia… 292 As Harcourts WA correctly submits, this is a direct reference to the very same business acquired by Harcourts WA. RWN commenced using the Roy Weston name to conduct its business immediately after RWN ceased as a long standing franchisee and licensee of the 'Roy Weston' name. If it be necessary, this is further supported by use of the photograph and signature of the founder of the Harcourts WA business, Mr Royer Weston. The evidence in the case clearly enables Harcourts WA to make out these contentions. The fact that Harcourts WA rebranded is not a defence. Depending on the facts, it may support claims of abandonment and non-use (not in this case), but it is not a defence to these contentions. Harcourts WA case succeeds on these points. RWN has sought to exploit this by granting sub-licences in correspondence in 2013. 293 Accordingly, in my view, RWN's conduct in respect of the Harcourts Trade Marks constitutes both passing off and misleading and deceptive conduct contrary to s 18 ACL. 6.2.10 Defences raised by RWN 6.2.10.1 Entitlement to use its company name (s 122(1)(a) TMA) 294 Although this issue is relevant to RWN's defence to Harcourts WA's claims, it also underlies the RWN position generally, including its cross-claims. In essence, it is at the heart of RWN's attack and defence. It is clear that Mr Taylor is very much of the view that as he acquired the shares in the company bearing the name Roy Weston Nominees Pty Ltd, he was entitled to use that name. This, he contends, both as a matter of commonsense and fairness, but also in support of a defence under s 122(1)(a)(i) TMA. I accept that usage of 'Roy Weston Nominees', if it is made in good faith, would give rise to the defence, but I do not accept that the defence extends beyond the company name. 295 However, I accept Harcourts WA's submission that the defence under s 122(1)(a)(i) TMA would only apply to RWN in respect of use of its own company name 'Roy Weston Nominees Pty Ltd'. This, in turn, would require good faith which presents a further difficulty to RWN. See, for example, 'Sweetheart Plastics Inc' cf 'Sweetheart Holding Corp' in Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corporation (1987) 8 IPR 285. 296 Harcourts WA contend that RWN's proposed defence of using its own name in good faith (s 122(1)(a)(i) TMA) is not available in the present case because the use of the Harcourts Trade Marks was not in good faith. 297 RWN was at all relevant times aware of the existence of the Harcourts Trade Marks and of the fact that the marks which RWN has used, including the registered RWN Trade Marks, are substantially identical. This was apparent from the adverse reports issued by IP Australia. RWN has always been aware that it was only permitted to use the 'Roy Weston' name for so long as it was a franchisee and was required to desist when the franchise came to an end. On that basis, Harcourts WA contends that the applications to register the RWN Trade Marks were made in bad faith. I have already indicated that I would not be prepared to reach this finding (at [285]-[286]) above. 298 However, an absence of fraud does not lead to a positive finding of good faith. The determination that a registration was not proceeded with in bad faith does not necessarily mean that the registration was pursued in 'good faith' as that expression is understood in the section. A misapprehension of rights based on selective viewing of the effect of either a franchise agreement, the effect of a company name or advice in relation thereto may deprive a registrant of the good faith defence. See the analysis in Anheuser-Busch, Inc v Budějovický Budvar [2002] FCA 390 per Allsop J (as his Honour then was) (at [217]-[218]): 217 The satisfaction of the requirements of good faith is not concluded by a conclusion of lack of fraud or lack of conscious dishonesty: Johnson & Johnson v Sterling Pharmaceuticals [(1991) 30 FCR 326] at 355-56 per Gummow J, with whom Lockhart J agreed on this point. In Adrema Ltd v Adrema-Werke GmbH [1958] RPC 323, 334, in a passage referred to with approval by Gummow J in Johnson & Johnson v Sterling Pharmaceuticals, supra, Danckwerts J said at 334: I think that the defendants knew that such use was likely to cause confusion, and they were determined to make use of the goodwill in connection with the machines which was associated with the word 'Adrema'. It may be that the German Company resented the loss of the trade marks and the claim that the goodwill in the United Kingdom associated with the name 'Adrema' was the property of an English Company which they had formed and of which they had lost control as a result of the war. But, in my view, these motives do not justify what the Defendants have done or make that bona fide. 218 Whilst the findings which I have made do not quite reach what Danckwerts J said – that Mr Bocek and the first respondent knew that it was likely that confusion would result from the use of the company name 'Budweiser Budvar', they have, I think, the same consequence. This is especially so when one considers the undermining of the benefits and protections intended to be afforded to registration which would occur if the facts, as I have found them, were to be characterised as exhibiting good faith: cf Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Ltd's Application (1968) 118 CLR 128, 133. There was an element of risk taking (cf Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569, 573, per Bowen CJ), probably as much a function of the strongly felt claim of right to which I have referred as anything else, not entirely dissimilar to the feelings of the German company referred to by Danckwerts J in Adrema, supra at 334 (see [217] above), which is not sufficient to damn the conduct as dishonest or fraudulent, but which is sufficient to deny the conduct the blessing of the characterisation of good faith. 299 See also Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 166 FCR 312, where Greenwood J said (at [105]): Section 122(1) of the [TMA] like s 64(1) of the 1955 Act, assumes infringing conduct on the part of the respondent that is excused when the person uses a sign in good faith to indicate one or more of the identified characteristics. Section 64(1)(b) contemplated use in good faith by a person 'of a description of the character or quality of his goods' whereas s 122(1)(b)(i) concerns use in good faith to indicate a broader range of characteristics. The essential concern going to good faith in s 122(1) is that the use be honest. Something less than fraudulent intention in the common law sense will suffice to prevent use being in good faith (Johnson & Johnson v Sterling (supra), per Gummow J at p 356). There must be however, identified conduct on the part of the respondent that demonstrates use of the sign in circumstances where Mr Hastie has engaged in conscious and deliberate acts to undermine the registered owner or the integrity of the trade mark. Has the respondent sought to undermine the trade mark by the 'assiduous efforts of an infringer? (Johnson & Johnson v Sterling per Gummow J at p 355 adopting the phrase used by Windeyer J in Re Bali Brassiere Co Inc Registered Trade Mark: An Application by v Berlei Limited (1968) 118 CLR 128 at 133). A conscious decision to try and render generic, a trade mark which on advice from reputable patent and trade mark attorneys would be infringed by use is an example (Sterling Pharmaceuticals Pty Ltd v Johnson & Johnson Australia Pty Ltd (1990) 96 ALR 277 at 311 per Hill J). In that case, the decision by Johnson & Johnson to use the trade mark was made with 'full knowledge' of the registration with advice that use would constitute infringement of the mark; and in circumstances where use was part of an international strategy to undermine the mark by rendering it generic. Since those ulterior motives subsisted, the use was found not to be honest. In this case, Mr Hastie had worked with and had been responsible for manufacturing S shaped wire droppers since 1978. He knew of the licence agreement between National Nail and Cyclone and knew that the improved dropper was the subject of a patent in New Zealand. He knew that royalties had been paid under the licence until the expiry of the prolongation period of the patent in New Zealand in 1986. Before entering the New Zealand market in 1996, Mr Hastie sought advice as to the patent position in that country. He understood that any patent had expired for the S shaped dropper. He assumed that there was no patent protection for it in Australia. He sought advice in 1996 from patent attorneys and he says he at least asked about the position in Australia. There is no independent written advice to Mr Hastie going to the position in Australia. I accept that Mr Hastie assumed in 2003 that there was no patent on foot in Australia but that he did not seek advice in 2003 as to the intellectual property position in Australia concerning the S dropper. 300 In fact, RWN went well beyond use of its own company name and engaged, and continues to engage in, use of a range of other marks which infringe Harcourts WA's trade mark for 'Roy Weston', including at least one or more of the following: (a) Roy Weston; (b) Roy Weston Real Estate; (c) the logo for Roy Weston Real Estate; and (d) the image which contains the superimposed suggested signature of Roy Weston. 301 These marks are not the company name of Roy Weston Nominees Pty Ltd. While an abbreviation would permit the usage of Roy Weston Nominees made in good faith, it is doubtful whether that would apply in this case as the use of 'Roy Weston' or 'Roy Weston Real Estate' could not be characterised as simply the use of the name 'Roy Weston Nominees Pty Ltd'. 302 In the email belatedly sent to chambers, the solicitors for RWN sought to draw attention to Maier in connection with the 'own name' defence. No submissions were developed as to how this English and European legislation and authority was relevant to the law in Australia. In light of my findings above, particularly in relation to whether the trade marks were registered in good faith, Maier does not influence my conclusion. 303 Although RWN may have, giving it a generous benefit of the doubt, believed it was entitled to pursue the registration, that belief was misconceived. The registration was in breach of Harcourts WA's rights and against Harcourts WA's wishes, which had been the subject of five letters of demand from Deacons. Therefore, I do not consider the defence under s 122(1)(a)(i) TMA is available to RWN. 6.2.10.2 Prior use of identical trade marks (s 124 TMA) 304 I deal, finally, with s 124 TMA (there being no separate submissions in relation to s 127). 305 RWN relies upon the defence under s 124 and s 127 TMA. Its submissions on this topic read as follows: [RWN] also relies upon the defence available at section 124 of the [TMA]. In particular section 127 provides a defence where a mark is eroded pursuant to section 92(3). Note that in connection with this defence the "critical period" referred to in section 127 is not the same as the period of non-use proved under section 92. Where two trade marks are registered which are substantially identical or deceptively similar neither has the right to control or prevent the registered owner of the other from using the trade mark other than might be endorsed on the trade mark. Note also there is no endorsement on any of the trade marks as anticipated by [TMA] section 23. The respondents have pleaded by way of defence and have cross claimed seeking declarations consistent with, section 120(2), section 122(1)(b) and section 124(1) (which operates as a defence via section 122(1)(e)). The respondents' principal position is that one does not need to rely upon these defences in any event. The primary answer to the allegation of trade mark infringement is that, the Harcourts' [sic] trade marks are liable to removal in every case. 306 In relation to this provision of the TMA, the submissions for RWN are as follows: 62 By section 124(1) of the TMA a person does not infringe a registered trade mark by using an unregistered mark in relation to closely related or similar services if that person, or their predecessor in title, have continuously used the unregistered mark in relation to those goods and services from a time before the date of registration of the registered marks. 63 This section operates to protect a prior user from liability for infringement under section 120. The section acts to restrict the operation of section 120. Section 124 operates to confer positive rights within its terms on the prior use of the trade mark (see EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 227). 64 Section 124 therefore operates to create a statutory right to use the trade mark which constitutes a statutory right envisaged by section 122(1)(e) which itself is a defence to section 120 TMA. The grounds relied upon are those relied upon with the ground of opposition under section 58. 65 The declarations sought in connection with sections 120, 122 and 124 are in each case true defences to the allegation of infringement. 307 Nothing in this discussion of principles links anything said to any of the evidence in this case or the facts as found. There is no satisfactory argument and there is no place for any application in favour of RWN of s 124(1) TMA. 6.3 Relief and delay 308 As discussed with the parties, I do not propose to deal in these findings and reasons with relief, save to observe that Harcourts WA has delayed in pursuing its rights. It is not sufficient for Harcourts WA to respond that the proceedings have been issued within the limitation period. RWN argues there was a 'legitimate' basis (I infer, subjectively) to believe there was no foundation in the threats originally made on behalf of Harcourts WA. Furthermore, it is not apparent that Harcourts WA has suffered loss or any damage by reason of RWN's conduct. In my view, Mr Taylor took the chance that Harcourts WA would not press its position, feeling perhaps fortified by the corporate name of RWN. That was, as matters transpired (albeit belatedly), a dangerous gamble. But, in my view, consideration of the relief, if any, to which Harcourts WA may be entitled would have to take into account its own delay. In light of this, while there has been no sign of it so far, the parties might both benefit by approaching a mediated resolution. 7. CONCLUSION 309 It will be apparent from the foregoing that, in most respects (but not all), Harcourts WA has succeeded in its claim. The parties are agreed, as I understand it, that I should not make orders as to relief until the parties have had the opportunity to consider their positions and make submissions, should that be necessary. 310 These reasons will be delivered in open court. The parties will have an opportunity to file a consent minute as to proposed directions and orders which may follow as to completion of argument, if any, concerning relief. If the parties are unable to agree on these, I will relist the matters. 311 The following orders are made. In relation to SAD 224 of 2012: 1. The parties file a consent minute as to orders and other relief reflecting these reasons within 21 days. 2. Absent agreement as to such orders: (a) within 28 days the applicant/cross-respondent file a minute as to the appropriate relief to reflect these reasons, supported by submissions. (b) within 10 days thereof the respondent/cross-claimant file corresponding material in response. (c) within 7 days thereof the applicant/cross-respondent file any reply material. (d) a directions hearing to address resolution of remaining issues as to relief, if any, be listed within two months. 312 In relation to WAD 167 of 2013: 1. The parties file a consent minute as to orders and other relief reflecting these reasons within 21 days. 2. Absent agreement as to such orders: (a) within 28 days the respondent/cross-claimant file a minute as to the appropriate relief to reflect these reasons, supported by submissions. (b) within 10 days thereof the applicant/cross-respondent file corresponding material in response. (c) within 7 days thereof the respondent/cross-claimant file any reply material. (d) a directions hearing to address resolution of remaining issues as to relief, if any, be listed within two months. I certify that the preceding three hundred and twelve (312) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice McKerracher. Associate: Dated: 24 February 2016 ANNEXURE a Annexure A shows: