Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369

FEDERAL COURT OF AUSTRALIA

Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369 File number(s): VID 1240 of 2018

Judgment of: ANDERSON J

Date of judgment: 5 November 2021

Catchwords: TRADE MARKS – applicant commenced trading in 1989 – applicant's registered trade marks include HENLEY, HENLEY PROPERTIES, HENLEY WORLD OF HOMES, HENLEY ESSENCE, HENLEY RESERVE and HENLEY COLLECTION – applicant's HENLEY and HENLEY PROPERTIES trade marks registered in 2006 – first respondent commenced trading in or around 2006 under and by reference to HENLEY CONSTRUCTIONS – applicant became aware of respondent in or around 2017 TRADE MARKS – whether first respondent used applicant's relevant trade marks in the course of trade – whether first respondent's use of relevant signs was use of a trade mark in the course of trade – whether there was substantial identity or deceptive similarity – whether first respondent used relevant signs in relation to relevant services – whether first respondent has infringed applicant's registered marks – first respondent has infringed applicant's registered marks pursuant to s 120(1) of the Trade Marks Act 1995 (Cth) CONSUMER LAW – ss 18, 29(1)(g) and 29(1)(h) of the Australian Consumer Law – ss 52, 53(c) and 53(d) of the Trade Practices Act 1974 (Cth) – whether first respondent contravened those provisions – relevant date for assessing applicant's reputation – assessment of applicant's reputation – consideration of class of public affected – whether first respondent's conduct constituted misrepresentations – whether evidence of confusion – first respondent's conduct in using the names "HENLEY CONSTRUCTIONS" and "HENLEY" was misleading or deceptive in contravention of relevant provisions TRADE MARKS – first respondent raised defence under s 122(1)(fa) of the Trade Marks Act 1995 (Cth) – whether first respondent has a right to register HENLEY CONSTRUCTIONS – whether such registration would be refused on basis of ss 58, 44(2), 42(b) or 60 of Trade Marks Act 1995 (Cth) – first respondent did not establish defence under s 122(1)(fa) TRADE MARKS – first respondent raised defence under s 122(1)(a)(i) of the Trade Marks Act 1995 (Cth) – whether first respondent has used own name in good faith – first respondent's initial use of "HENLEY CONSTRUCTIONS" and "HENLEY" was not a good faith use of Henley Constructions' name pursuant to s 122(1)(a)(i) TRADE MARKS – first respondent raised defence under s 124 of the Trade Marks Act 1995 (Cth) – first respondent failed to establish defence TRADE MARKS – cross-claim – first respondent claimed applicant's trade marks did not have relevant inherent ability to distinguish relevant services – alleged applicant's trade marks accepted by the Registrar of Trade Marks on the basis of evidence or representations that were false in material particulars – alleged relevant non-use by applicant – assessment of applicant's use – consideration of discretion in ss 101(3) and 101(4) of Trade Marks Act 1995 (Cth) – cross-claims dismissed TRADE MARKS – ancillary liability – whether second respondent was joint tortfeasor with first respondent in its infringement of each of the applicant's relevant marks – whether second respondent was relevantly involved in contraventions of the Australian Consumer Law or Trade Practices Act 1974 (Cth) – second respondent was joint tortfeasor and relevantly involved TRADE MARKS – relief – non-pecuniary relief – consideration of injunctions and declarations