Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100

FEDERAL COURT OF AUSTRALIA Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100 File number:

Judgment of: JACKMAN J

Date of judgment: 20 September 2024

TRADE MARKS – where applicant the owner of the trade mark consisting of the word ESTABLISHMENT in Classes 9, 25, 41 and 42, which include restaurant, bar and hotel services – where trade mark has been used since September 2000 in respect of a multi-level restaurant, bar and hotel business in Sydney – where respondent operates a restaurant in Brisbane under the name ESTABLISHMENT 203 – where respondent is part of a family-owned beef business in Queensland which includes an abattoir, and that abattoir was given the establishment number 203 by the Australian Government in about 1997 – claim for infringement and cross-claim for cancellation – claim allowed and cross-claim dismissed TRADE MARKS – whether to cancel ESTABLISHMENT as a trade mark under s 88(2)(a) of the Trade Marks Act 1995 (Cth) – whether mark was capable of distinguishing applicant's services – whether applicant was owner of mark at priority date TRADE MARKS – whether ESTABLISHMENT 203 is deceptively similar to ESTABLISHMENT Catchwords: TRADE MARKS – whether respondent can rely upon defence of good faith use of own name under s 122(1)(a) of the Trade Marks Act 1995 (Cth) – whether defence available to new companies – whether respondent acted in good faith – where respondent did not conduct trade mark searches or ask the company's lawyers for advice when choosing name – where respondent received letter of demand from applicant CONSUMER LAW – contraventions of Australian Consumer Law ss 18, 29(1)(g) and (h) – whether respondent represented that its services are commercially related to the applicant's ESTABLISHMENT business