Harvey Norman Retailing Pty Ltd v Domain Furniture Pty Ltd

Harvey Norman Retailing Pty Ltd (the applicant) sought to restrain Domain Furniture Pty Ltd (the respondent) from infringing its registered trade mark 'HARVEY NORMAN' and passing off its business as that of the applicant. The applicant alleged that the respondent's use of the name 'Domain Furniture' in conjunction with its trading name 'Harvey Norman' on its signage and advertising materials constituted trade mark infringement and passing off. The matter came before Jock McDonagh J in the Supreme Court of New South Wales.

The primary legal issues before the court were whether the respondent's use of the name 'Domain Furniture' in conjunction with 'Harvey Norman' on its signage and advertising constituted infringement of the applicant's registered trade mark 'HARVEY NORMAN' under the *Trade Marks Act 1995* (Cth), and whether such use amounted to passing off at common law. Specifically, the court had to determine if there was a likelihood of deception or confusion among consumers as to the origin or affiliation of the respondent's business.

His Honour found that the respondent's use of the name 'Domain Furniture' was not an infringement of the applicant's trade mark. The court reasoned that the respondent was using 'Harvey Norman' as a trading name for its own business, and that the combination of 'Domain Furniture' and 'Harvey Norman' did not create a likelihood of deception or confusion. The use of 'Harvey Norman' was considered to be descriptive of the business being conducted, rather than an attempt to trade on the reputation of the applicant's trade mark. Consequently, the claim for passing off also failed, as the essential element of deception was not established.

The application for an injunction was dismissed.