Henley Constructions Pty Ltd v Henley Arch Pty Ltd
[2023] FCAFC 62
•28 April 2023
FEDERAL COURT OF AUSTRALIA
Henley Constructions Pty Ltd v Henley Arch Pty Ltd [2023] FCAFC 62
Appeal from: Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369 File numbers: VID 737 of 2021
VID 164 of 2022Judgment of: YATES, ROFE AND MCELWAINE JJ Date of judgment: 28 April 2023 Catchwords: TRADE MARKS – appeal – where primary judge found that the respondent’s registered trade mark HENLEY was valid and infringed by the first appellant – whether primary judge erred in finding that HENLEY was capable of distinguishing the respondent’s services under s 41 of the Trade Marks Act 1995 (Cth) (the Trade Marks Act) – where primary judge found that HENLEY was not inherently distinctive – where primary judge found that s 41(6) was satisfied – no error established in finding that s 41(6) was satisfied
TRADE MARKS – infringement – substantial identity –whether primary judge erred in finding that HENLEY CONSTRUCTIONS is substantially identical to the respondent’s registered composite mark comprising the words HENLEY and PROPERTIES with device elements – error established – appeal allowed in part
TRADE MARKS – infringement – deceptive similarity – whether primary judge erred in finding that certain marks used by the first respondent are deceptively similar to the respondent’s registered marks – no error established
TRADE MARKS – infringement – use as a trade mark – whether primary judge erred in finding that the first appellant had used certain signs as trade marks – whether primary judge failed to have regard to the setting in which each sign was used – no error established
TRADE MARKS – infringement – prior use defence – whether primary judge erred in finding that the first appellant had not established a defence under s 124 of the Trade Marks Act – where primary judge found that the respondent’s use of the infringed marks HENLEY COLLECTION, HENLEY RESERVE and HENLEY ESSENSE was use of HENLEY based on s 7(1) of the Trade Marks Act – where primary judge found that the first appellant had not used HENLEY CONSTRUCTIONS prior to the respondent’s first use of HENLEY – error established – appeal allowed in part
CONSUMER LAW – misleading and deceptive conduct – false or misleading representations – whether primary judge erred in finding that the first appellant had contravened the Australian Consumer Law and the Trade Practices Act 1974 (Cth) – whether primary judge erred in finding that the respondent had a relevant reputation – whether primary judge erred in finding that the building and construction industry is a national industry – whether primary judge erred in finding that there to be evidence of consumer confusion – no error established
TRADE MARKS – relief – whether primary judge erred in directing the question of an account of profits be determined separately after all other relief – where trial set down on all issues – no error established
TRADE MARKS – cross appeal – whether primary judge erred in finding that the first appellant’s use of 1300HENLEY was not use as a trade mark – error established – cross-appeal allowed
COSTS – application for leave to appeal from costs judgment of primary judge – offer of compromise under r 25.14(3) of the Federal Court Rules 2011 (Cth) – where primary judge ordered that the appellants pay the respondent’s costs on an indemnity basis – whether primary judge erred in finding that the respondent obtained a judgment more favourable than its offer of compromise – application for leave to appeal dismissed
Legislation: Competition and Consumer Act 2010 (Cth) Sch 2 ss 18, 29
Trade Marks Act 1995 (Cth) ss 7, 17, 41, 62, 92, 120, 122, 124
Trade Practices Act 1974 (Cth) ss 52, 53
Federal Court Rules 2011 (Cth) r 25.14(3)
Cases cited: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56
Blount Inc v Registrar of Trade Marks [1998] FCA 440; 83 FCR 50
Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; 129 IPR 482
Carr v Finance Corporation of Australia Ltd (No 1) (1981) 147 CLR 246
Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511
Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; 164 FCR 506
Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44
Glazier Holdings Pty Ltd v Australian Men’s Health Pty Ltd [2000] NSWSC 253
Henley Arch Pty Ltd v Henley Constructions Pty Ltd (No 2) [2022] FCA 231
Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369; 163 IPR 1
In Re The Magnolia Metal Company’s Trade Marks [1897] 2 Ch 371
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
Meehan v Glazier Holdings Pty Ltd [2002] NSWCA 22; 54 NSWLR 146
Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; 275 ALR 526
Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130; 197 FCR 67
Oxford University Press v Registrar of Trade Marks (1990) FCR 1
Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd [2020] FCA 82; 150 IPR 11
Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; 191 FCR 297
Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 317 Date of last submission: 16 May 2022 Date of hearing: 4–5 May 2022 Counsel for the Appellants: Mr A Bannon SC and Mr A Sykes Solicitor for the Appellants: Gestalt Law Counsel for the Respondent: Mr T Cordiner KC and Ms L Davis Solicitor for the Respondent: Ashurst ORDERS
VID 737 of 2021
VID 164 of 2022BETWEEN: HENLEY CONSTRUCTIONS PTY LTD ACN 123 122 038
First Appellant
PATRICK SARKIS
Second Appellant
AND: HENLEY ARCH PTY LTD ACN 007 316 930
Respondent
ORDER MADE BY:
YATES, ROFE AND MCELWAINE JJ
DATE OF ORDER:
28 APRIL 2023
THE COURT ORDERS THAT:
1.Subject to Orders 2 to 4, the parties bring in agreed orders giving effect to these reasons for judgment.
2.In the event that the parties cannot agree on the orders to be made:
(a)within 10 days of the date of these orders, each party serve on the other a draft of the orders the party proposes, supported by written submissions not exceeding three pages; and
(b)within a further seven days, each party serve on the other party responding submissions not exceeding two pages.
3.At the time of service referred to in Order 2, the parties provide copies of the served documents to the Chambers of each member of the Full Court.
4.Subject to further order, the question of the orders to be made in this appeal be determined on the papers.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
INTRODUCTION
[1]
BACKGROUND
[9]
THE PRIMARY JUDGE’S REASONS
[20]
The evidence
[21]
The case on trade mark infringement
[37]
Claims under the ACL and the Trade Practices Act
[46]
The trade mark defences
[60]
The cross-claim
[75]
Cancellation
[78]
Removal for non-use
[85]
Ancillary liability
[92]
Relief
[93]
OVERVIEW OF THE APPEAL AND THE CROSS-APPEAL
[94]
VALIDITY: THE 820 MARK (HENLEY)
[102]
The appellants’ submissions
[102]
Analysis
[113]
The notice of contention
[145]
INFRINGEMENT: THE 818 MARK (THE “HENLEY PROPERTIES” DEVICE MARK)
[147]
The appellants’ submissions
[147]
Analysis
[150]
INFRINGEMENT: VARIOUS MARKS AND THE ISSUE OF DECEPTIVE SIMILARITY
[155]
The appellants’ submissions
[155]
Analysis
[165]
INFRINGEMENT: VARIOUS MARKS AND TRADE MARK USE
[182]
The appellants’ submissions
[182]
Analysis
[186]
INFRINGEMENT: THE PRIOR USE DEFENCE
[197]
The appellants’ submissions
[197]
Analysis
[205]
CONTRAVENTIONS OF THE ACL AND TRADE PRACTICES ACT
[228]
The appellants’ submissions
[228]
Analysis
[236]
The notice of contention
[273]
RELIEF: ACCOUNT OF PROFITS
[275]
The appellants’ submissions
[275]
Analysis
[277]
RELIEF: INJUNCTIONS
[284]
CROSS-APPEAL: 1300HENLEY
[288]
The cross-appellant’s submissions
[288]
Analysis
[296]
LEAVE TO APPEAL: COSTS
[307]
CONCLUSION
[315]
SCHEDULE A
THE COURT:
INTRODUCTION
The appellants, Henley Constructions Pty Ltd (Henley Constructions) and Patrick Sarkis, have appealed from a judgment of a single Judge of the Court. Mr Sarkis is the sole director of, and shareholder in, Henley Constructions.
In the proceeding below, the present respondent, Henley Arch Pty Ltd, alleged that Henley Constructions had: (a) infringed the respondent’s registered trade marks by dint of s 120(1) of the Trade Marks Act 1995 (Cth) (the Trade Marks Act); and (b) contravened certain provisions of the Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth)) (the ACL) and the Trade Practices Act 1974 (Cth) (the Trade Practices Act). The respondent alleged that, in respect of Henley Constructions’ trade mark infringements, Mr Sarkis was a joint tortfeasor. It also alleged that, in respect of Henley Constructions’ contraventions of the Australian Consumer Law and the Trade Practices Act, Mr Sarkis was liable as a person involved in those contraventions.
In respect of the allegations of trade mark infringement, the appellants denied infringement and raised certain defences to infringement. Henley Constructions cross-claimed seeking cancellation of the registered marks from the Register of Trade Marks or their removal for non-use (or, alternatively, that limitations be placed on the scope of their registrations). The appellants also denied the alleged contraventions of the ACL and the Trade Practices Act.
The primary judge largely accepted the respondent’s case: Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369; 163 IPR 1 (J). We summarise the primary judge’s findings below at [20]-[93].
On 25 November 2021, the primary judge granted declarations in respect of Henley Constructions’ trade mark infringements and contraventions of the ACL, and Mr Sarkis’s involvement in those infringements and contraventions. His Honour also made orders dismissing Henley Constructions’ cross-claim, restraining the appellants from engaging in specified conduct, and requiring the appellants to take all steps necessary to transfer certain domain names to the respondent. His Honour made a number of procedural orders. On 18 February 2022, Rofe J granted leave to appeal from those orders.
On 17 March 2022, the primary judge made costs orders. On 31 March 2022, the appellants filed an application seeking leave to appeal from those orders. This leave application has been heard concurrently with the present appeal.
The respondent has cross-appealed on the single ground that the primary judge erred in finding that Henley Constructions had not used the sign 1300HENLEY as a trade mark. It has also filed a notice of contention seeking to support the primary judge’s findings in relation to the validity of the registration of the respondent’s work mark HENLEY, and the primary judge’s findings of contravention of the ACL.
We have concluded that the cross-appeal succeeds, and the appeal succeeds in part.
BACKGROUND
The respondent is a builder of homes in Victoria, South Australia, Queensland and New South Wales. Since 1989, it has used a number of trade marks in the promotion of its business.
From 1989 until about 2005, it used the following marks (which the primary judge called the Initial Henley Devices):
From about 2005, it used the following marks (which the primary judge called the 2005 Henley Devices):
From about 2017, it used the following marks (which the primary judge called the 2017 Devices):
The respondent is the registered owner of the following trade marks, which compromise or include the word HENLEY (the registered marks):
Mark Reg. No Priority Date Registered Services HENLEY 1152820 18 December 2006 Building and construction services (class 37); architectural, engineering, design, drafting and interior design services (class 42) 1152818 18 December 2006 HENLEY WORLD OF HOMES 1152819 18 December 2006 HENLEY ESSENCE 1806558 2 November 2016 Building and construction services (class 37); architectural, engineers, design, drafting and interior design services including construction design and construction drafting (class 42) HENLEY RESERVE 1806561 2 November 2016 HENLEY COLLECTION 1806570 2 November 2016
It will be observed that the registered marks can be classified according to their registration dates. Trade mark 1152818, trade mark 1152819, and trade mark 1152820 (respectively, the 818 mark, the 819 mark, and the 820 mark) were registered with effect from 18 December 2006. Trade mark 1806558, trade mark 1806561, and trade mark 1806570 (respectively, the 558 mark, the 561 mark, and the 570 mark) were registered with effect from 2 November 2016 (together, the 2016 registered marks). The significance of this classification is relevant to the application of the appellants’ defence under s 124 of the Trade Marks Act.
It will also be observed that, other than the 818 mark, the registered marks are word marks. The 818 mark is a composite mark comprising the words HENLEY and PROPERTIES, represented in a particular stylised form and arrangement with device elements (which the primary judge called the “HENLEY PROPERTIES” Device Mark).
Henley Constructions is a property developer focussing on the construction of residential unit blocks in and around suburban Sydney. It is also involved in the construction of commercial units and private homes (including home renovations).
In conducting its business, Henley Constructions used a number of signs and devices. These include the words HENLEY and HENLEY CONSTRUCTIONS, and the following logos (the Henley Constructions logos):
(a)the first Henley Constructions logo:
(b)the second Henley Constructions logo:
(c)the third Henley Constructions logo:
Henley Constructions has used other signs and devices, such as:
(a)the domain name henleyconstructions.com.au;
(b)the domain name Henleygallery.com.au;
(c)the name THE HENLEY DISPLAY GALLERY;
(d)the name HENLEY BUILT;
(e)crane signage using the word HENLEY; and
(f)various hashtags in social media, specifically #henleyconstructions, #henleygallery, and #henley.
The primary judge found that Henley Constructions’ use of each of the signs and devices noted in [17] and [18] above infringed each of the registered marks. In doing so, he rejected the appellants’ defences to infringement, including those raised by their cross-claim. However, the primary judge was not persuaded that Henley Constructions’ use of the telephone number 1300HENLEY, or its use of number plates incorporating the element HENLY or HNLY, involved trade mark use.
THE PRIMARY JUDGE’S REASONS
The primary judge published comprehensive reasons for judgment (1005 paragraphs comprising 289 pages). The following is a summary of those reasons, which provides the necessary context in which to understand the issues raised in this appeal.
The evidence
After making some introductory remarks (including identifying the registered marks and other marks used by the respondent), the primary judge surveyed the evidence adduced by the respondent (at J[17] – [176]) and the evidence adduced by the appellants (at J[177] – [351]). His Honour made a number of important findings in respect of the adoption of the name HENLEY CONSTRUCTIONS.
The thrust of the evidence given by Mr Sarkis and his wife, Vanessa Sarkis, was that “in or around June or July 2006” or “on or around 10 September 2006” (the evidence given by Mr Sarkis and Mrs Sarkis varied in this detail), Mr Sarkis and Mrs Sarkis discussed Mr Sarkis’s ambition to own a construction company that would become Australia’s biggest builder and developer. Mrs Sarkis offered to come up with some company names for the soon-to-be established company that was to fulfil this ambition.
After initially coming up with a large list of names, Mrs Sarkis arrived at a shortened, handwritten list comprising:
(a)“Belcorp D’s/C’s”;
(b)“Henley D’s/C’s”;
(c)“Cordell D’s/C’s”;
(d)“Meridian C’s”;
(e)“Walford C’s/D’s”;
(f)“Bel C’s”; and
(g)“Denoble D’s/C’s”.
It is not in dispute that the reference to “D’s” in the list was to “Developments” and the reference to “C’s” was to “Constructions”.
Mrs Sarkis gave evidence as to how she arrived at these names. The primary judge did not accept the truthfulness of that evidence. It is not necessary to descend to the detail of the primary judge’s findings with respect to Mrs Sarkis’s choice of names other than for “Henley D’s/C’s”. It is sufficient to record that, on all the evidence, the primary judge was satisfied that, in 2006, Mrs Sarkis conducted Google searches of names already used in the construction industry and then assessed if adding the words “Developments” or “Constructions” meant that they were available names to register as company names with the Australian Securities and Investments Commission (ASIC).
Mr Sarkis gave evidence that he did not undertake any research of who his competition was likely to be in the building industry. However, after canvassing and considering the views of others, he decided to select “Henley Constructions” as the name for his company.
Paragraph 30 of Henley Constructions’ Amended Defence alleged that Mr Sarkis’s chose the corporate name “Henley Constructions Pty Ltd” in good faith. The particulars to that paragraph stated:
Mr Sarkis chose the name “Henley Constructions” due to his pre-existing fondness of the male name “Henley”. This fondness includes the fact that Mr Sarkis has mentioned to his wife prior to the Selection Date that if they had a son he would like to call him “Henley Joseph Sarkis”.
In cross-examination, Mr Sarkis said that he did not provide those instructions to his solicitors. The primary judge noted, however, that Mr Sarkis’s solicitor, Lance Scott, gave evidence that Mr Sarkis did provide those instructions. The primary judge commented that the discrepancy between Mr Sarkis’s evidence and Mr Scott’s evidence, in this regard, was not explained and that the particulars to paragraph 30 of Henley Constructions’ Amended Defence were unreliable.
Mrs Sarkis’s evidence was that she had first heard of the name “Henley” in mid-2006 when watching an American reality television show in which one of the participant’s sisters was named “Henley”. She said that she subsequently conducted a Google search of the name and found that it was of English origin, meaning “high meadow”.
At J[265], the primary judge found:
265Mrs Sarkis, under cross-examination, denied making an internet search of the name “Henley Properties” in 2006. Mrs Sarkis denied that, in her searches to find a building company name, she came across the name “Henley Properties” and the website Mrs Sarkis denied ever undertaking a Google search of the name “Henley” alone. Mrs Sarkis agreed that she would have searched on Google for “Henley Constructions”.
In cross-examination, Mrs Sarkis denied that, in her searches to find a company name, she came across the name “Henley Properties” and the henley.com.au website.
At J[319], the primary judge found:
319I do not accept Mrs Sarkis’s denial that she did not come across the name Henley Properties and the henley.com.au website when searching the internet to find a building company name. Mrs Sarkis gave evidence that she conducted Google searches of the name “Henley Constructions”. Mrs Sarkis said that she did not remember conducting a Google search for the word “Henley” on its own. Mrs Sarkis said that she would have searched on Google for “Henley Constructions”. That critical fact was not deposed to in her affidavit nor viva voce evidence in chief. Mrs Sarkis said that she searched on Google for “Henley name meaning” and “Henley Constructions” but she did not recall typing the word “Henley” into Google by itself. Mrs Sarkis also denied seeing the henley.com.au website. I do not accept this evidence of Mrs Sarkis. The cross-examination below is instructive:
So if you go to page 2498 [of the Court Book, being part of annexure “LNS-6” to the affidavit of Lance Newman Scott affirmed 9 May 2019], this is a search here, a particular search, but it’s a search for any website which has the word Henley in it, [and] any website which has the word homes or building or marketing. Do you see that?---I do. Yes.
Yes. And obviously, homes and marketing are not very aligned to the word constructions, but you agree that building is aligned to the word constructions?---Yes. I agree. It’s similar. Yes.
Yes. And I put to you that if you have put in a search for Henley Constructions, you would have got a result very similar to what we see at [page] 2499 [of the Court Book], which is at the second position. This is a worldwide search:
Display home Victoria Henley home Henley Properties Group.
And I put it to you that’s exactly what happened in November 2006. Do you agree with that?---Sorry. Can you repeat that question?
I put it to you that in November 2006, you would have seen a search result like this when searching for Henley Constructions. I put it to you you did get a search result similar to this when you searched for Henley Constructions on Google, which came up with the second link, which is – there’s a yellow highlight on part of it:
Display home Victoria Henley home Henley Properties Group Victoria.
You see that?---Yes. I can see that. Yes.
And I put it to you when you put together this list, you saw that on Google searching?--- No, because I don’t remember ever seeing that.
And I put to you that you clicked on that link and you went to a website which looks very much like the website at page 2506 [of the Court Book]?---I’m just going there now.
Yes?--- I’ve never seen that.
I put to you that you thought that Henley was a good name, but you knew that Henley was being used, for example, as Henley Properties Group on this website. So you did an ASIC search, saw that Henley Developments and Henley Constructions Proprietary Limited were not in use, and so you put in on your list; you agree with that?---No.
Having considered other aspects of Mrs Sarkis’s evidence in cross-examination, the primary judge found:
320I find on the evidence that Mrs Sarkis, when she conducted a Google search in 2006 for the name “Henley Constructions”, would have seen the second position listing of the Henley Properties Group’s website. I find that, at the relevant time in 2006, Mrs Sarkis found the website and knew that the name “Henley” was being used by Henley Properties Group who operated a business in Victoria, South Australia and Queensland in respect of building and constructing homes. I find that Mrs Sarkis then conducted an ASIC search and saw that the names “Henley Developments” and “Henley Constructions” were available to be registered. Mrs Sarkis then put the name “Henley D’s/C’s” on the shortlist.
At J[323], the primary judge also found:
323I find that Mrs Sarkis conducted a Google search in 2006 and found the Henley Properties Group website, and told Mr Sarkis about the Henley Properties Group website. Mrs Sarkis conceded in cross-examination that she did search Henley Constructions in Google, and Google searches conducted in 2006 show that a Google search of “Henley” with any of “homes”, “building” or “marketing” retrieved the website as the second listed search result. In these circumstances, it should be inferred that, when Mrs Sarkis searched “Henley Constructions” in 2006 (which Mrs Sarkis has conceded she did in fact do), Mrs Sarkis came across the Henley Properties Group website.
With respect to Mr Sarkis’s evidence, the primary judge found:
339In light of the findings made above, I find that, by December 2006, Mr Sarkis had knowledge of the business of Henley Arch and its use of the names “Henley Properties Group” and “Henley”. Mr Sarkis had that knowledge because Mrs Sarkis had informed him that she had conducted Google searches and ascertained the existence of Henley Arch’s website and the use of the names “Henley Properties Group” and “Henley”. I find that Mr Sarkis had knowledge of Henley Arch’s use of “Henley Properties Group” and “Henley” prior to the incorporation of Henley Constructions Pty Ltd on 13 December 2006 and had been informed by Mrs Sarkis that the names “Henley Constructions” and “Henley Developments” were available to be registered on the ASIC register. I find Mr Sarkis, with that knowledge, had Mr Murabak obtain registration of both those names for the benefit of the first respondent.
Having surveyed the evidence, the primary judge turned to consider the respondent’s case on trade mark infringement.
The case on trade mark infringement
The respondent produced a Particulars Table which identified the signs which Henley Constructions allegedly used and which, according to the respondent, infringed its registered trade marks: see J[354]. Conspicuously, the Particulars Table did not identify, in respect of each sign, the registered mark alleged to have been infringed. It appears, however, that the respondent’s case was that each of the registered marks (listed in [13] above) was infringed by each particularised act. The Particulars Table is reproduced in Schedule A to these reasons.
Although admitting that Henley Constructions had used the sign HENLEY CONSTRUCTIONS as a trade mark, the appellants disputed that Henley Constructions had used the other signs as trade marks for building and construction services.
One of the allegedly infringing signs was 1300HENLEY. The primary judge was not persuaded that this sign was used by Henley Constructions as a trade mark. His Honour held:
455The display of the phone word “1300HENLEY” is a contact number, rather than a brand. This is because it provides a method by which persons can contact Henley Constructions. In the context in which it is used, I do not accept that consumers would view this as a brand or a badge of origin.
The respondent also alleged that various number-plates used by Henley Constructions—such as 01-HNLY, 05-HNLY, and 12-HNLY —infringed the registered marks. Once again, the primary judge was not persuaded that these signs were used by Henley Constructions as trade marks. His Honour held:
456With respect to the licence plates, in my view, a consumer would not view a number plate as projecting a brand or a badge of origin. If anything, a consumer would view a number plate as a way of identifying a vehicle. I am not persuaded that the use of “HENLY” or “HNLY” on a number plate entailed trade mark use.
However, subject to these exceptions, the primary judge was persuaded that Henley Constructions had used the other signs (referenced in the Particulars Table) as trade marks for its building and construction services in a manner that infringed each of the respondent’s “relevant registered trade marks” under s 120(1) of the Trade Marks Act. The primary judge referred to these as Infringing Signs.
On the question of trade mark comparison, the appellants admitted that the sign HENLEY was substantially identical with the 820 mark (HENLEY). They denied, however, that the sign HENLEY CONSTRUCTIONS was substantially identical with the 820 mark (HENLEY) or the 818 mark (the “HENLEY PROPERTIES” Device Mark). The primary judge found to the contrary: J[470].
The primary judge found that the sign HENLEY CONSTRUCTIONS was also deceptively similar to the 818 mark (the “HENLEY PROPERTIES” Device Mark): J[479]. His Honour said that the same reasoning applied to the comparison between each of the signs “#henley constructions” and “henleyconstructions.com.au”: J[479]
The primary judge found that each of the other Infringing Signs was deceptively similar to the 818 mark (the HENLEY PROPERTIES Device Mark): J[480].
The primary judge found, further, that each of the other Infringing Signs was deceptively similar to each of the other registered marks—namely, the 819 mark (HENLEY WORLD OF HOMES) (J[482] – [485]), the 558 mark (HENLEY ESSENCE), the 561 mark (HENLEY RESERVE), and the 570 mark (HENLEY COLLECTION) (J[486] – 489]).
Claims under the ACL and the Trade Practices Act
The primary judge then turned to consider the respondent’s case on misleading or deceptive conduct and false or misleading representations. The respondent’s case was that Henley Constructions’ conduct in promoting itself using the signs HENLEY CONSTRUCTIONS and HENLEY (including as part of signs that incorporate one or both of those names) was misleading or deceptive in contravention of s 18 of the ACL and constituted the making of representations in contravention of ss 29(1)(g) and 29(1)(h). The respondent also relied on the corresponding provisions of the Trade Practices Act (ss 52, 53(c) and 53(d)) in relation to Henley Constructions’ conduct up to the commencement of the ACL. It is convenient to refer to the claims under the ACL and the Trade Practices Act as, simply, the ACL claim.
The respondent contended that the date for assessing its reputation—which was central to its case in this regard—was February 2007, when Henley Constructions commenced using its name on invoices. The respondent contended, alternatively, that the relevant date was February 2017.
The respondent’s case was that, at both dates, it had a significant reputation throughout Australia in the HENLEY brand in respect of building and construction services.
The appellants accepted that at relevant times the respondent had a significant reputation in the HENLEY brand in at least Victoria in respect of the building and construction of single detached houses and townhouses. They contended, however, that this reputation did not extend to building homes in New South Wales and did not extend to the construction of multi-dwelling residential apartments.
Moreover, the appellants contended that the relevant date for assessing Henley Constructions’ conduct was December 2006, when Henley Constructions entered into a contract with a development company to build a multi-dwelling apartment block in Camperdown located in inner-Western Sydney.
The primary judge was satisfied that Henley Constructions commenced using its name in February 2007, as the respondent had contended. His Honour was satisfied that there was no earlier use by Henley Constructions of the sign HENLEY CONSTRUCTIONS as a trade mark in respect of building and construction services.
The primary judge was also satisfied that, after Henley Constructions was put on notice of the respondent’s claims by a letter dated 13 April 2017 (see J[59]), Henley Constructions “ramped up” its marketing and promotion using the sign HENLEY CONSTRUCTIONS including by enlarging the word HENLEY and by reducing the size of the descriptive word CONSTRUCTIONS.
The primary judge rejected the appellants’ submission that the respondent’s reputation did not extend to building homes in New South Wales and did not extend to the construction of multi-dwelling residential apartments. The primary judge found that the respondent had a significant reputation throughout Victoria, Queensland and South Australia, which extended into New South Wales. His Honour also found that this reputation was not limited to single dwelling detached homes but extended to multi-dwelling residential townhouses or, more generally, to the respondent as a builder of homes.
The primary judge also rejected the appellants’ submission that the Australian building industry is State and Territory based, and not national.
Further, the primary judge did not accept the appellants’ submission that the respondent’s reputation was limited such that Henley Constructions’ use of the sign HENLEY CONSTRUCTIONS in relation to the construction of multi-dwelling residential apartment building would not lead to confusion. In this connection, the primary judge was not persuaded, on the evidence, that the relevant class of the public would understand and appreciate the differences in construction between detached single dwelling homes, townhouses and multi-dwelling residential apartment buildings.
As to Henley Constructions’ conduct, the primary judge found that, between February 2007 and February 2017, Henley Constructions used HENLEY CONSTRUCTIONS and HENLEY, including as part of signage, in a “sporadic and limited fashion”. From around February 2017, Henley Constructions used HENLEY CONSTRUCTIONS and HENLEY in “an increasing manner”. The primary judge accepted that, from February 2017, Henley Constructions sought to promote itself to a broader section of the public by escalating its marketing activity and by expanding the channels through which it advertised, including by way of social media platforms.
In making those findings, the primary judge accepted that Henley Constructions had used the trade indicia particularised in the Particulars Table, on a number of the occasions identified in the table. The primary judge was satisfied that Henley Constructions had represented that:
(a)it was the respondent;
(b)it was affiliated with the respondent;
(c)it was sponsored or approved by the respondent;
(d)its services were provided by, or with the licence or authority of, the respondent;
(e)its services were affiliated with the respondent; and/or
(f)its services were sponsored or approved by the respondent.
The primary judge noted his understanding that there was no dispute that, if made, these representations were false. His Honour observed that, in any event, it was obvious that those representations, if made, were false.
In light of his findings, the primary judge found that Henley Constructions had contravened ss 18, 29(g), and 29(h) of the ACL and, at relevant times before the commencement of the ACL, ss 52, 53(c), and 53(d) of the Trade Practices Act.
The trade mark defences
The appellants contended that Henley Constructions had a defence under s 122(1)(fa) of the Trade Marks Act to the respondent’s claims of infringement.
Section 122(1)(fa) provides:
(1) In spite of section 120, a person does not infringe a registered trade mark when:
…
(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; …
In essence, the appellants contended that Henley Constructions was entitled to registration of the sign HENLEY CONSTRUCTIONS as a trade mark in respect of building and construction services or, alternatively, in respect of building and construction services relating to multi-dwelling residential apartments in New South Wales, if it were to apply for that mark. The respondent disputed that entitlement on a number of bases.
The primary judge rejected that defence. He did not accept that the appellants had established that Henley Constructions had the right to register HENLEY CONSTRUCTIONS as a trade mark, for the reasons given at J[670] – [716]. There is no appeal against the rejection of that defence.
The appellants contended that Henley Constructions also had a defence under s 122(1)(a)(i) of the Trade Marks Act, which provides:
(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; …
The primary judge rejected that defence, for the reasons given at J [747] – [757]. At J [747] – [748], the primary judge said:
747Henley Constructions cannot succeed in establishing that it, at all times, used the name “Henley Constructions” and occasionally the name “Henley” in good faith as the name of its business: see Amended Defence, particulars to [19] and [34]. This is because, from its very first use on 10 February 2007, Mrs Sarkis, Mr Sarkis and Henley Constructions knew of the existence of Henley Arch’s business which was promoted by use of the website and the “HENLEY PROPERTIES” Device Mark in connection with building and construction services. I reject Mr and Mr Sarkis’s and Henley Constructions’ evidence that they did not know of the existence of Henley Arch’s business, its use of the website and its use of the “HENLEY PROPERTIES” Device Mark and the “HENLEY” trade mark in connection with the promotion of Henley Arch’s building and construction services.
748Furthermore, I find, on the evidence, that after being put on notice by Henley Arch’s cease and desist letter on 13 April 2017, Henley Constructions “ramped up” its promotional activity of the mark “HENLEY CONSTRUCTIONS” and, in a new logo, increased the size of the dominant word “Henley” and reduced the size of the descriptive word “Constructions” such that it became more likely that consumers would be confused in this regard.
There is no appeal against the rejection of that defence.
The appellants also relied on the “prior use” defence provided by s 124 of the Trade Marks Act:
124Prior 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.
Note 1: For deceptively similar see section 10.
Note 2: For predecessor in title and date of registration see section 6.
(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.
This defence was limited to the claims of infringement of the 558 mark (HENLEY ESSENCE), the 561 mark (HENLEY RESERVE), and the 570 mark (HENLEY COLLECTION), being the marks registered with effect from 2 November 2016. The primary judge noted that the appellants made no claim of prior use by Henley Constructions of HENLEY, alone, as a trade mark given that the appellants had denied that Henley Constructions had, in fact, used HENLEY as a trade mark.
The primary judge was satisfied that Henley Constructions had used HENLEY CONSTRUCTIONS in relation to services that were similar to, or the same as, the services in respect of which the 2016 registered marks were registered. He was also satisfied that Henley Constructions had continuously used the mark HENLEY CONSTRUCTIONS in relation to those services before 2 November 2016. However, the primary judge was not satisfied that Henley Constructions had used HENLEY CONSTRUCTIONS before the respondent “first used the trade mark”: s 124(1)(f). It is clear that, here, the primary judge considered the “trade mark” for the purposes of s 124(1)(f) of the Trade Marks Act to be HENLEY, not HENLEY ESSENCE, HENLEY RESERVE, or HENLEY COLLECTION.
In reaching a conclusion, the primary judge called in aid s 7(1) of the Trade Marks Act, which provides:
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note: For prescribed court see section 190.
At J[768] – [770], the primary judge reasoned:
768In this respect, the priority date for the “HENLEY” registered mark is 18 December 2006. Henley Arch has continuously used the “HENLEY” registered mark at least since that date. As I have already stated above, in my view, each of the 2016 registered marks is dominated visually by the word “Henley”, it being the first and distinctive word in the mark followed by a descriptive term such as “Collection” being descriptive of building and construction services such as a collection of homes. Henley with the descriptive term “Reserve” refers to building and construction services which are special. Henley with the descriptive term “Essence” refers to the essence or essential building and construction services. In other words, each of the 2016 registered marks predominantly uses the dominant memorable feature, being the word “Henley” alone, with the addition of a formal, descriptive word. The use of the 2016 registered marks, in my view, constitutes use of “HENLEY” with an addition or alteration that does not substantially affect the identity of the trade mark “HENLEY”. In my view, “HENLEY COLLECTION”, “HENLEY RESERVE” and “HENLEY ESSENCE” are use of the trade mark, “HENLEY”.
769In these circumstances, I do not accept that Henley Constructions has used the “HENLEY CONSTRUCTIONS” mark before “the registered owner of the registered trade mark … first used the trade mark”: TMA, s 124(1)(e). This is because Henley Constructions did not use the “HENLEY CONSTRUCTIONS” mark before the priority date for Henley Arch’s “HENLEY” mark and, for the reasons stated above, pursuant to s 7(1) of the TMA, Henley Arch’s use of the 2016 registered marks is use of the “HENLEY” registered mark.
770As a consequence, I am not satisfied that Henley Constructions has established a defence under s 124 of the TMA.
In relation to this defence the respondent contended that, in any event, as at 2 November 2016, Henley Constructions had not used a number of the signs referenced in the Particulars Table—specifically:
(a)the second Henley Constructions logo;
(b)1300HENLEY;
(c)the third Henley Constructions logo;
(d)THE HENLEY DISPLAY GALLERY;
(e)henleygallery.com.au;
(f)HNLY; or
(g)the crane signage particularised as reference I in the Particulars Table.
The primary judge referred to these signs as the Post-November 2016 Signs.
The primary judge concluded that, as at 2 November 2016, Henley Constructions had not used the Post-November 2016 Signs and that the “prior use” defence in s 124 of the Trade Marks Act was not available to Henley Constructions in respect of those signs.
The cross-claim
Henley Constructions claimed that the registration of the 820 mark (HENLEY) should be cancelled under s 88(1)(a) of the Trade Marks Act. The claim was based on two grounds: first, as at 18 December 2006, the 820 mark was not capable of distinguishing the respondent’s services in respect of which the mark was registered (see s 41); and second, the Registrar had accepted the application for registration of the mark on the basis of a representation that was false in material particulars (see s 62(b)).
Henley Constructions also claimed that the 820 mark had not been used in New South Wales in the period 7 October 2015 to 7 October 2018 and that its registration should be made subject to two limitations, expressed as: (a) “Registration does not cover the State of New South Wales”; and (b) in respect of the class 37 services in respect of which the mark was registered, “none of the above being in relation to multi-dwelling residential apartment buildings”.
Henley Constructions claimed, further, that the 818 mark (the “HENLEY PROPERTIES” Device Mark) had not been used in Australia, or alternatively New South Wales, and should be removed from the Register or, if not removed, the registration should be made subject to the two limitations sought for the 820 mark.
Cancellation
Section 41 of the Trade Marks Act, as in force as at the date of registration of the 820 mark, provided:
41 Trade mark not distinguishing applicant’s goods or services
(1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
The primary judge found that there was nothing inherently distinctive about the sign HENLEY in relation to building and construction services. Indeed, at J[824] he found that HENLEY was, without more, a “non-distinctive mark”. Nevertheless, the primary judge was satisfied that, as at 18 December 2006, the mark had the capacity to distinguish the building and construction services provided by the respondent and was registrable on the basis provided by s 41(5) of the Trade Marks Act in its then form. The primary judge went further and, on the basis of the evidence as to the respondent’s use of HENLEY in various forms, found that, as at 18 December 2006, HENLEY had, in fact, become distinctive of the building and construction services provided by the respondent such that the requirement of s 41(6) of the Trade Marks Act, in its then form, was satisfied. Therefore, this aspect of Henley Constructions’ challenge failed.
Section 62(b) of the Trade Marks Act provides:
The registration of a trade mark may be opposed on any of the following grounds:
…
(b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
Henley Constructions submitted that, in order to overcome an objection that the 820 mark was not registrable because of s 41 of the Trade Marks Act in its then form, the respondent filed written submissions and a declaration from one of its officers, Janine Armstrong. Henley Constructions submitted that these documents falsely represented that the respondent had engaged in national use of the HENLEY mark and that it intended to expand that use, at a time when, in fact, the respondent had a branding strategy for each State market. For New South Wales, that strategy was to operate under the EDGEWATER brand. Henley Constructions contended that these allegedly false representations were material to the Registrar’s decision to accept the application for registration, and caused acceptance to occur.
The primary judge was not satisfied, on the evidence, that the statements made in the written submissions and the declaration conveyed the alleged representations. The primary judge said that the evidence on this issue was “simply inadequate to make any findings”.
The primary judge also found that the objection failed on the question of causation. There was no evidence upon which a finding could be made as to what information the Registrar relied upon in accepting the application for registration.
Therefore, this aspect of Henley Constructions’ challenge also failed.
Removal for non-use
Relevantly, s 92 of the Trade Marks Act provides:
(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.
Note 3:For when the registration of a trade mark is taken to have effect, see sections 72 and 239A.
…
The primary judge found that the respondent had established, on the balance of probabilities, that it had used the 820 mark in good faith, including in New South Wales, in respect of the registered services in the claimed non-use period.
Further, the primary judge was not persuaded that a limitation should be imposed on the specification of the class 37 services, as sought by the appellants. In this regard, the primary judge was persuaded that there was not a meaningful distinction between, on the one hand, building and construction services and, on the other hand, building and construction services in respect of multi-dwelling residential apartments.
In any event, the primary judge was satisfied that the respondent had, in fact, used the 820 mark in respect of multi-dwelling residential apartments. His Honour also said that, even if he had not been persuaded of that fact, he would have been persuaded to exercise the discretion under s 101(3) of the Trade Marks Act not to remove the mark from the Register.
As to the 818 mark (the “HENLEY PROPERTIES” Device Mark), the primary judge reasoned (at J[954]) that “a total impression of similarity emerges” from a comparison between the 818 mark and the 2005 Henley Devices. He reasoned, further, that the only relevant difference between the 818 mark and the 2005 Henley Devices was that the 818 mark included the word PROPERTIES in smaller font encased by a rectangular bar.
The primary judge then considered whether the respondent’s use of the 2005 Henley Devices was use of the 818 mark with additions or alterations that did not affect the identity of the 818 mark: see s 7(1) of the Trade Marks Act. He answered that question in the respondent’s favour and found that the respondent’s use of the 2005 Henley Devices was use of the 818 mark. This led the primary judge to conclude that the respondent had used the 818 mark in the claimed non-use period.
However, the primary judge also stated that “if that position be doubted”, he would exercise the discretion under s 101(3) of the Trade Marks Act not to remove or partially remove the 818 mark from the Register.
Ancillary liability
The primary judge found that Mr Sarkis was liable as a joint tortfeasor for Henley Constructions’ trade mark infringements and for aiding and abetting, or being knowingly concerned, directly or indirectly, in Henley Constructions’ contraventions of the ACL.
Relief
It is only necessary to refer to one aspect of the primary judge’s consideration of the appropriate relief. In the course of final submissions, the primary judge ordered that the question of whether there should be an account of profits be dealt with separately and after all other relief in the proceeding had been determined. Accordingly, the primary judge did not consider that question further in his reasons for judgment. We observe, however, that, on 5 November 2021, the primary judge ordered the parties to provide proposed minutes of orders to give effect to his reasons for judgment, including a timetable for the steps required for a hearing on the relief sought by the respondent for an account of profits. On 25 November 2021, his Honour ordered that there be an account of profits made by the appellants by reason of their infringement of the respondent’s registered marks.
OVERVIEW OF THE APPEAL AND THE CROSS-APPEAL
The appellants do not seek to challenge a number of the primary judge’s findings and conclusions. They nevertheless contend that the primary judge erred in finding that Henley Constructions infringed the registered marks (Grounds 1 and 2).
Specifically, the appellants contend that the primary judge erred in:
(a)failing to find that the registration of the 820 mark (HENLEY) is invalid on the ground that the mark is not capable of distinguishing the respondent’s services, and, consequently, in failing to cancel that registration (Grounds 1, 3, 4 and 5);
(b)finding that Henley Constructions’ unregistered word mark HENLEY CONSTRUCTIONS is substantially identical to the 818 mark (the “HENLEY PROPERTIES” Device Mark (Ground 7);
(c)finding that each of certain signs and devices used by Henley Constructions—namely, HENLEY CONSTRUCTIONS; the Henley Constructions logos; henleyconstructions.com.au; THE HENLEY DISPLAY GALLERY; the crane signage; various hashtags (not #henley); Henleygallery.com.au; and HENLEY BUILT—are deceptively similar to each of the registered marks (leaving aside the HENLEY word mark) (Ground 8);
(d)finding that Henley Constructions had used certain signs and devices—namely, the hashtags; henleyconstructions.com.au, HENLEY; THE HENLEY DISPLAY GALLERY; Henleygallery.com.au; and HENLEY BUILT—as trade marks in respect of the designated services (Ground 9);
(e)finding, in relation to the defence under s 124 of the Trade Marks Act, that Henley Constructions’ word mark HENLEY CONSTRUCTIONS and the first Henley Constructions logo were not used prior to the respondent’s use of the 558 mark (HENLEY ESSENCE), the 561 mark (HENLEY RESERVE), and the 570 mark (HENLEY COLLECTION) (Ground 10); and
(f)finding, in relation to the defence under s 124 of the Trade Marks Act, that the second Henley Constructions logo, the third Henley Constructions logo, and certain crane signage, were not used prior to the respondent’s use of the 558 mark (HENLEY ESSENCE), the 561 mark (HENLEY RESERVE), and the 570 mark (HENLEY COLLECTION) (Ground 11).
The appellants also contend that the primary judge erred in finding that a consumer of building and construction services is likely to be led into error, and be misled into the belief, that Henley Constructions is affiliated, sponsored, approved, or licensed by the respondent, such as to constitute a contravention of ss 18, 29(g), and 29(h) of the ACL, and at relevant times before the commencement of the ACL, ss 52, 53(c), and 53(d) of the Trade Practices Act (Ground 12).
The appellants also contend that the primary judge erred in directing that the question of an account of profits be dealt with separately, and after all other relief in the proceeding has been determined (Ground 13), and in granting injunctive relief in the form his Honour did (Grounds 14 and 15).
For completeness, we record that the appellants do not press Ground 6 of the notice of appeal.
As noted, the respondent cross-appeals on the single ground that the primary judge erred in finding that Henley Constructions’ use of 1300HENLEY was not trade mark use. The respondent contends that the primary judge should have found that Henley Constructions’ use of 1300HENLEY infringed each of the registered trade marks, and that this use also contravened the Trade Practices Act and the ACL. The respondent contends, further, that the primary judge should have found that Mr Sarkis is jointly liable with Henley Constructions for these infringements, and as an accessory in relation to the contraventions.
As also noted, by its notice of contention, the respondent seeks to support the primary judge’s finding concerning the validity of the registration of the 820 mark (HENLEY). The respondent contends that the primary judge was correct to conclude that s 41(5) of the Trade Marks Act (as in force at 18 December 2006) applies to that registration, although not for the reason that his Honour advanced. Further, the respondent contends that, even if the HENLEY word mark is not capable of distinguishing its designated services, the mark should not be removed from the Register on discretionary grounds.
The respondent also seeks to support the primary judge’s findings of contravention of the ACL and the Trade Practices Act by contending, in the alternative, that the relevant date for considering Henley Constructions’ conduct is February 2017.
VALIDITY: THE 820 MARK (HENLEY)
The appellants’ submissions
Grounds 1, 3, 4 and 5 of the notice of appeal are directed to the validity of the 820 mark (HENLEY) gauged by reference to s 41 of the Trade Marks Act as in force at the priority date of 18 December 2006. It is to be remembered that the primary judge found that, at that date, HENLEY had the capacity to distinguish the respondent’s building and construction services, and thus satisfied the requirement of s 41(5) of the Trade Marks Act. However, the primary judge also found that, at that date, HENLEY had, in fact, become distinctive of those services, and thus satisfied the requirement of s 41(6) of the Trade Marks Act. By grounds 1, 3, 4 and 5 of the notice of appeal, the appellants challenge each of those findings.
As to the finding in respect of s 41(5), the appellants rely on the primary judge’s finding (at J[810]) that there is nothing inherently distinctive about HENLEY as a trade mark in relation to common services, like building and construction services, and his Honour’s finding (at J[824]) that HENLEY, without more, is a “non-distinctive mark”. These findings were informed by other findings made by the primary judge about the use of HENLEY as a surname and as a geographical name.
The appellants submit that, having made these findings, the primary judge erred at J[828] in finding that the requirement of s 41(5) of the Trade Marks Act was satisfied in respect of the respondent’s building and construction services. The appellants submit that the requirement of s 41(5) could only have been met if the primary judge had been satisfied that, at the relevant date, the mark was “to some extent inherently adapted to distinguish” the respondent’s services. On his Honour’s findings, this requirement could not be met. They submit that his Honour’s finding to the contrary at J[828] was an “obvious” error. In oral submissions, the appellants referred to this as “a slip”.
As to s 41(6), the appellants submit that the primary judge was required to give specific consideration to the extent to which the mark itself (i.e., HENLEY) had been used. The appellants submit that the primary judge’s finding that, at the priority date, HENLEY had become distinctive of the respondent’s building and construction services involved a number of errors.
First, the appellants rely on a number of authorities which discuss the cogency of the evidence that is normally required to establish that a descriptive word, such as a geographical name, has become distinctive of the particular source of given goods or services.
Secondly, and relatedly, they submit that use of a mark in association with a logo (whether or not as part of a composite mark) will “substantially dilute” the significance of the use of the mark, in contrast to use of the mark without a logo.
Thirdly, the appellants refer to that part of J[828] where, after finding that HENLEY had the capacity to distinguish the respondent’s building and construction services, the primary judge said:
828… It follows that I am satisfied on the evidence that the requirements of s 41(5) of the TMA as at 18 December 2006 have been satisfied and that the “HENLEY” mark has acquired distinctiveness as at the priority date of the building and construction services provided by Henley Arch.
The appellants submit that the primary judge’s finding that s 41(5) of the Trade Marks Act was satisfied could not support a finding that s 41(6) was satisfied.
Fourthly, the appellants submit that the primary judge’s findings at J[826] – [827] concerning the respondent’s use of HENLEY alone or with additions, and his Honour’s reliance on the findings he made as to the respondent’s use of, and reputation in, the word HENLEY when dealing with the respondent’s ACL claims, reflect error because aspects of these findings were not concerned with the use of HENLEY simpliciter but HENLEY in association with other trade mark elements.
In this connection, the appellants submit that the primary judge’s reasons do not “expose” for analysis the uses of HENLEY simpliciter before the priority date. The appellants submit that the Initial Henley Devices and the 2005 Henley Devices contain a device element (in the appellants’ words, “a distinctive triangular logo”) and, in the case of the Initial Henley Devices, additional words (“properties group”, “properties” or “properties group of companies”), which preclude a finding of substantial identity with HENLEY. They submit that the website to which the domain name henley.com.au resolves (when used as part of a URL) features the composite use of logos and words (as described above) which “could not suffice to eclipse the ordinary signification of HENLEY”. The appellants submit, further, that the primary judge’s findings in relation to the ACL claims “provide no illumination”.
Fifthly, the appellants submit that mere use of, or reputation in, a descriptive word is not enough to establish acquired distinctiveness for the purposes of s 41(6) of the Trade Marks Act.
Analysis
The primary judge found that, at the priority date, the respondent had extensively used the word HENLEY by itself, in the domain name henley.com.au, and as part of the Initial Henley Devices and the 2005 Henley Devices. His Honour found that the use of HENLEY in conjunction with the device and other word elements of the Initial Henley Devices and the 2005 Henley Devices did not affect the identity of HENLEY in that context and that consumers would identify services sold under those signs by the word HENLEY.
In reaching these findings, the primary judge referred to the evidence of the respondent’s reputation which he had discussed when dealing with the claims made against the appellants under the ACL. The respondent’s case in that regard was that, as at February 2007 (the date of first use by Henley Constructions of HENLEY), and also at February 2017, it had a significant reputation throughout Australia in the HENLEY “brand” through its extensive promotion and use of the names HENLEY and HENLEY PROPERTIES in respect of building and construction services.
The primary judge also recorded that it was not in dispute that, at all relevant times (meaning, in the context of the ACL claim, as and from February 2007 when Henley Constructions commenced to use HENLEY), the respondent had a significant reputation in HENLEY, at least in Victoria in respect of the building and construction of semi-detached houses and townhouses.
The primary judge’s reference to this fact not being in dispute appears to derive from a number of sources.
First, in its opening submissions on its cross-claim (by which, amongst other things, it attacked the validity of the 820 mark under s 41 of the Trade Marks Act), Henley Constructions conceded that, due to the respondent’s activities in Victoria, HENLEY was “a known brand in the project home market in Victoria” at the priority date for the 820 mark.
Secondly, this concession was confirmed in oral argument during the course of the hearing below, when clarification was sought by the respondent as to what was in issue in the proceeding so far as the respondent’s reputation in HENLEY was concerned. The following exchange took place between the primary judge and counsel for the parties:
MR CORDINER: Your Honour, I raise this other just final matter. Your Honour will recall in my opening that I stressed that we were relying in the main on the reputation within Victoria, that is, the build-up of the reputation in Henley, Henley properties, and etcetera, in Victoria.
HIS HONOUR: Yes.
MR CORDINER: And we took it from last week’s objections hearing that there wasn’t really much debate about the reputation in Victoria. We’ve sought to clarify that with our friends.
HIS HONOUR: Yes.
MR CORDINER: Unfortunately, I don’t think it’s in a satisfactory state in the sense that maybe it’s about adjectives, or was it a significant reputation or not significant reputation, etcetera. Our position is we don’t want to have to tender all the material which supports the existence of a reputation in Victoria which was significant, but if our friends – unfortunately, if they take the position there was not one, then we might have to go through that process. So I will still keep engaging with our friends, but I put your Honour on notice - - -
HIS HONOUR: Yes.
MR CORDINER: - - - that we don’t want to be blamed for having to rely on material to support a reputation when, unfortunately, our friends have put us to that point.
HIS HONOUR: Yes. Let me hear from Mr Hennessy. Mr Hennessy, I must say, last week at least when I was dealing with objections as to evidence, I must say that what I took out of what had transpired between the bench and the bar table was that it was accepted that Henley had a reputation in Victoria for residential homes, and a significant reputation, and what’s really at issue here is what, if any, reputation do they have elsewhere.
MR HENNESSY: Well - - -
HIS HONOUR: Am I right in that?
MR HENNESSY: That’s correct. That’s what I’ve taken out of it.
HIS HONOUR: Good.
MR HENNESSY: So I’ve got – I must plead ignorance about what dispute there is that’s going on.
HIS HONOUR: Well, it doesn’t sound like there is a dispute anymore, Mr Hennessy.
MR HENNESSY: From our – it’s news to me. And it may be that there’s some adjective in correspondence that has been the subject of a dispute, but you would have seen – your Honour would have seen, including from our written submissions, references to it’s not in – I think to this effect. It’s not in dispute that it’s a known brand.
HIS HONOUR: Well, I thought a lot of what your cross-examination was directed to this morning was to that very point.
MR HENNESSY: Exactly.
Thirdly, in its written closing submissions, Henley Constructions said (with reference to its opening submissions on its cross-claim):
As Henley Constructions has repeatedly made plain there is no issue about the fact that Henley Arch has acquired a reputation in the brand “Henley” in Victoria. At issue is whether it has a reputation in that brand in other [S]tates, most relevantly NSW.
Notwithstanding its acceptance that the respondent had acquired a reputation in the HENLEY “brand” at the priority date of the 820 mark, Henley Constructions argued before the primary judge that the respondent’s reputation in the “brand” was limited in that the reputation did not extend to building homes in New South Wales (as indicated by the above quotation), and it did not extend to the construction of multi-dwelling residential apartment buildings. This was the true area of contest, not whether the respondent had a reputation (which, in oral argument before the primary judge, the appellants accepted was a significant reputation) in the HENLEY “brand” in respect of building and construction services at the relevant time.
The primary judge rejected the submission that the respondent’s reputation in HENLEY in respect of building and construction services was geographically limited (as Henley Constructions had contended) and found that the respondent had a significant reputation throughout Victoria, Queensland and South Australia, which extended into New South Wales.
The primary judge also found that the respondent’s reputation was not limited to single dwelling detached homes but extended to multi-dwelling residential townhouses and, more generally, to the respondent as a builder of homes.
Further, the primary judge was not persuaded, on the evidence, that the relevant class of the public would understand and appreciate, in any event, the difference between the construction of detached single dwelling homes, townhouses and multi-dwelling residential apartment buildings.
Although the concession to which we have referred was not specifically mentioned in J[826], [827] and [829] of the primary judge’s reasons, his Honour’s findings in respect of the ACL aspect of the respondent’s claim, particularly as to its reputation, were referred to. We are in no doubt that those findings were of considerable importance to his Honour’s consideration of the question of whether, at the priority date of the 820 mark, HENLEY did, in fact, distinguish the respondent’s building and construction services from the building and construction services of other traders. But, his Honour’s findings on the respondent’s reputation in HENLEY in relation to building and construction services were not based simply on the concession. The primary judge’s findings were based on his Honour’s consideration of the totality of the evidence on this subject.
A fair reading of the primary judge’s reasons shows, clearly, that his Honour firmly had in mind the principles by which a sign is adjudged to be capable of distinguishing goods and services for the purposes of s 41 of the Trade Marks Act, particularly where the sign comprises an arguably descriptive word, including a geographical name. This is manifest from his Honour’s extensive quotations from Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 at [236]; Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; 164 FCR 506 (Colorado) at [128]; and Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; 129 IPR 482 at [92] – [93], and, his recourse to illustrative examples from Colorado, Blount Inc v Registrar of Trade Marks [1998] FCA 440; 83 FCR 50; Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; 191 FCR 297; Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511; and Oxford University Press v Registrar of Trade Marks (1990) FCR 1.
A fair reading of the primary judge’s reasons also shows, clearly, that the primary judge firmly had in mind Henley Constructions’ submissions on this question. The primary judge recorded these submissions at length, noting in particular Henley Constructions’ submission that HENLEY lacked inherent distinctiveness in relation to common services, like building and construction services, because (a) HENLEY (and its variant HENLY) was a surname or a component of a surname used by substantial number of people; (b) HENLEY was also a geographical location; and (c) people with surnames containing or consisting of HENLEY or HENLY may reasonably want to use those names to describe their services, and traders from a geographical location called HENLEY may want to refer to that location as the place from which their services emanate or the location at which those services are provided.
We note, however, that, in relation to the name HENLEY as a geographical location, the primary judge was not satisfied that the evidence supported Henley Constructions’ contention that consumers associated, or would associate, the name HENLEY with particular localities. As the primary judge correctly observed at J[805], when considering whether a geographical name has, for trade mark purposes, the capacity to distinguish a trader’s goods or services, the focus is the ordinary signification of the name in question. In other words, is the name, according to its ordinary meaning, understood as a geographical name? See, for example, the treatment of the name COLORADO in Colorado at [128]. A geographical name does not assume significance for trade mark purposes “simply because some place upon the earth’s surface has been called by it”: In Re The Magnolia Metal Company’s Trade Marks [1897] 2 Ch 371 at 393.
Further, a fair reading of the primary judge’s reasons shows, clearly, that the primary judge firmly had in mind Henley Constructions’ submission that, at the priority date of the 820 mark, HENLEY had not acquired distinctiveness, in the sense of distinguishing the respondent’s services from the services of other traders.
We accept that the primary judge’s reliance on s 41(5) of the Trade Marks Act—to find that the HENLEY mark had the capacity to distinguish the respondent’s building and construction services—was an error, having regard to his Honour’s earlier finding at J[810] that HENLEY is not inherently distinctive. Given the primary judge’s finding at J[810], it is, with respect, also difficult to follow his Honour’s chain of reasoning in J[828] (quoted above) in which, with reference to s 41(5) of the Trade Marks Act, he expressed his satisfaction that HENLEY had acquired distinctiveness at the priority date.
However, when regard is had to J[829], we are satisfied that the primary judge gave separate attention and consideration to s 41(6) of the Trade Marks Act and the question of whether, as at the priority date of the 820 mark, HENLEY had in fact become distinctive of the respondent’s building and construction services. To be clear, we are not persuaded that the primary judge’s finding in relation to s 41(6) was reached on the basis that satisfaction of the requirement of s 41(5) meant that the requirement of s 41(6) was also met.
Further, we are satisfied that the primary judge’s finding in relation to s 41(6) was directed to the correct question, which was not merely about reputation, but about the designation of trade source. This is signified by his Honour’s specific reference to the following passage in Lockhart J’s judgment in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 336, which his Honour quoted in part at J[829] when expressing his ultimate conclusion that, at the priority date of the 820 mark, HENLEY had in fact become distinctive of the respondent’s building and construction services:
Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the identity of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source.
It is beyond question that when, in the context of s 41(6), the primary judge referred to the respondent’s reputation in HENLEY, he was referring to reputation in the sense of designating the particular trade source of given services—here, the respondent’s building and construction services.
We do not accept that the primary judge’s finding in relation to the satisfaction of s 41(6) was affected by error because his Honour took account of the respondent’s use of HENLEY with device elements and other words, as well as the respondent’s use of HENLEY alone.
Here, the primary judge accepted the respondent’s submission, based on s 7(1) of the Trade Marks Act, that its use of the Initial Henley Devices and the Henley 2005 Devices in relation to building and construction services was also a use of the 820 mark—that is, a use that did not substantially affect the identity of HENLEY, itself, as a trade mark in respect of those services.
It is to be noted that the 820 mark is, simply, the word HENLEY, unconfined by any particular form of graphical representation or other limitation. The registration of the 820 mark conferred on the respondent a monopoly in the trade mark use of the name HENLEY in relation to the services for which it was registered. This monopoly extended to the trade mark use of the name in particular stylistic renderings, including in association with device elements and other words.
The primary judge’s point was that, even when used in the context of the Initial Henley Devices and the 2005 Henley Devices, the word HENLEY was the sign by which consumers would identify the respondent’s services. In other words, as a matter of substance, these uses were simply exemplifications of the use of HENLEY itself which, before the priority date, contributed to the acquisition of distinctiveness of the name HENLEY as the source of the respondent’s building and construction services at the priority date.
In submissions, the appellants argued for a different outcome by seeking to distinguish the Initial Henley Devices and the 2005 Henley Devices by a process of reasoning that (a) relied on the primary judge’s finding that HENLEY was not inherently distinctive, and (b) gave prominence to other aspects of the Initial Henley Devices and the 2005 Henley Devices, such as the triangular device and, in the case of the Initial Henley Devices, the words PROPERTIES GROUP, PROPERTIES GROUP OF BUILDERS, and PROPERTIES. The endeavour in this argument was to shift attention from the word HENLEY and to place emphasis on these other elements so as to subsume the name HENLEY within them, and destroy its separate identity when so used.
The appellants contended, in particular, that the word PROPERTIES was of some significance because, contrary to the primary judge’s finding at J[479], the word PROPERTIES does not signify building and construction services. On the appellants’ argument, the word PROPERTIES, as used in various forms in the Initial Henley Devices, imparts some special quality which sets apart the Initial Henley Devices from use of the word HENLEY itself.
By its notice of contention, the respondent seeks to support the primary judge’s findings that Henley Constructions had contravened the ACL and the Trade Practices Act by contending that, if the primary judge erred in his assessment of the respondent’s reputation in the name HENLEY as at February 2007 in respect of the respondent’s supply of building and construction services, then the relevant date for assessing its reputation was February 2017, at which time the respondent held a sufficient reputation to establish its claims in this regard (Ground 4 of the notice of contention).
Given our conclusion that Ground 12 of the notice of appeal does not succeed, this contention does not arise for determination.
RELIEF: ACCOUNT OF PROFITS
The appellants’ submissions
During closing submissions, and after hearing from the parties, the primary judge decided that he would determine the respondent’s claim for an account of profits separately, after he had determined the question of all other relief: J[989]. Ground 13 of the notice of appeal contends that the primary judge erred in making that decision.
In this connection, the appellants submit that the trial had been set down on all issues with no separate order for the determination of liability. The parties had tendered evidence during the course of the trial relating to the respondent’s claim for an account of profits. The appellants submit that the respondent’s evidence did not support an order for monetary relief on the basis of an account of profits, or otherwise. The appellants submit that the primary judge provided no reasons for coming to his decision that the question of an account of profits be determined separately.
Analysis
In dealing with this ground of appeal, it is important to bear in mind two matters.
The first matter is the circumstances in which the primary judge’s decision came to be made. The prospect that the question of the respondent’s claim for an account of profits should be dealt with separately was raised by the primary judge, not the parties. What is more, it was raised by the primary judge after reflecting on the closing submissions which the respondent had made on the question of pecuniary relief during the previous day of the hearing. The primary judge said that he was “not comfortable” in dealing with the question of an account of profits for a number of reasons, which he expressed to the parties. The appellants are wrong in contending that the primary judge did not give reasons for his decision.
It is clear from the transcript that the parties were at issue as to the sufficiency of the evidence, then before the primary judge, to determine that question. It is also clear that the primary judge was concerned that, up to that point, he had not been given appropriate assistance on that question in the submissions he had received.
The appellants, through their counsel, foreshadowed that, but for the prospect raised by the primary judge, they would have submitted that the respondent had “simply failed in relation to this claim of relief” and that “[the appellants] would prefer to see this go now”. However, noting the primary judge’s “degree of discomfort”, counsel for the appellants stated that “we don’t want to push hard against that”—a reference, no doubt, to the appellants’ degree of resistance to the prospect that the primary judge had raised. Indeed, counsel for the appellants said: “we can see the sense alternatively of hiving it off”.
The second matter is that, in dealing with this ground of appeal, it is also important to note that Order 8 made by the primary judge on 25 November 2021 was that there be an account of profits arising from the trade mark infringements which his Honour had found. Thus, his Honour’s reference at J[989] to the question of an account of profits being dealt with separately after all other relief in the proceeding had been determined must be understood as meaning the determination of the amount payable on taking that account, not whether there should be an account of profits.
We do not see error in the primary judge reaching, and giving effect to, his decision to defer dealing with the question of an account of profits (in the sense we have noted) until after dealing with the respondent’s other claims for relief. The taking of an account of profits is a two-step process involving a finding that a person is an accounting party and, if so, that an account be taken. How the account is taken is a matter for further orders or directions; commonly the account is verified by affidavit, a method is determined to resolve objections and upon completion of the procedure the defaulting party is ordered to pay the amount found to be due: see generally, Glazier Holdings Pty Ltd v Australian Men’s Health Pty Ltd [2000] NSWSC 253 at [150]–[156] (Austin J) and on appeal Meehan v Glazier Holdings Pty Ltd [2002] NSWCA 22; 54 NSWLR 146 at [31]–[33] (Giles JA, Sheller and Beazley JJA concurring). The appellants were accounting parties upon the findings of trade mark infringement and involvement therein. The orders made by the primary judge were orthodox. How the account is to proceed, whether before the primary judge or a referee, will be a matter for the primary judge to determine. The parties remain free to make submissions to the primary judge on that question.
Ground 13 of the notice of appeal does not succeed.
RELIEF: INJUNCTIONS
The appellants do not address Grounds 14 and 15 of the notice of appeal in their written submissions.
Ground 14 of the notice of appeal contends that the primary judge erred in finding that non-pecuniary relief should be granted in relation to the Infringing Signs. This ground is premised on the appellants succeeding on their grounds of appeal with respect to the trade mark issues. Ground 15 of the notice of appeal contends that the primary judge erred in finding that non-pecuniary relief should be granted in relation to the Infringing Signs that have not been used “in breach” of the Trade Marks Act.
We understand both grounds to mean that injunctive relief for trade mark infringement should not be granted where trade mark infringement has not been established. While that simple proposition is correct, it does not follow that use of the Infringing Signs, in trade or commerce, is not covered by the other injunctive relief granted by the primary judge, where that use constitutes conduct, or is an integral element of conduct, or the making of a representation, that constitutes a contravention, or threatened contravention, of the ACL.
The question of whether non-pecuniary relief was correctly granted by the primary judge, or should be varied, now falls to be assessed against the appellants’ success on the appeal and the respondent’s success on the cross-appeal.
CROSS-APPEAL: 1300HENLEY
The cross-appellant’s submissions
The primary judge found (at J[454]) that the sign 1300HENLEY did not infringe the registered marks because Henley Constructions had not used that sign as a trade mark.
At J[455], the primary judge said:
455The display of the phone word “1300HENLEY” is a contact number, rather than a brand. This is because it provides a method by which persons can contact Henley Constructions. In the context in which it is used, I do not accept that consumers would view this as a brand or a badge of origin.
Having made that finding, the primary judge, understandably, did not proceed to consider whether 1300HENLEY was deceptively similar to any of the registered marks. It also seems that the primary judge did not take the use of that sign into account when considering the respondent’s ACL claim: see J[593] – [594].
By its cross-appeal, the respondent contends that the primary judge erred in finding that Henley Constructions had not used 1300HENLEY as a trade mark. It submits that the primary judge should have found that, by using 1300HENLEY, Henley Constructions infringed each of the registered marks.
The respondent submits that, while one of the functions of the sign 1300HENLEY was to convey to consumers a telephone phone number (being 1300 436 539), that function did not preclude the sign from also being used as a trade mark. The respondent submits that, in the context in which it was used, the sign would also be perceived by consumers as a badge of origin in relation to building and construction services. The respondent submits that, in each of the instances of use, Henley Constructions chose to use the letters rather than the phone number itself. In doing so, Henley Constructions gave prominence to the word HENLEY which would draw the attention of consumers to this word as distinguishing Henley Constructions’ services from those of other service providers. The respondent contrasted the hypothetical position of Henley Constructions using an anodyne sign such as 1300BUILD (1300 28453).
The respondent submits that the use of 1300HENLEY was akin to the use of a domain name for a website which, while functioning as a uniform resource locator directing consumers to a website, also performs the function of the trade mark.
Further, the respondent contends that Henley Constructions’ use of 1300HENLEY constituted conduct that contravenes ss 18, 29(1)(g) and 29(1)(h) of the ACL, regardless of whether its use also constituted trade mark infringement. The respondent submits that, in light of its reputation, as found by the primary judge, a person seeing 1300HENLEY would believe that the services offered in connection with that sign were connected with it.
The respondent contends that the primary judge should have held that Mr Sarkis was (a) a joint tortfeasor in relation to this infringement of the registered marks, and (b) a person who either aided or abetted, or was knowingly concerned in, Henley Constructions’ contraventions of the ACL in this regard.
Analysis
The cross-appeal does not raise any question of principle. It simply raises the question whether the primary judge came to the wrong conclusion on a question of fact, involving an evaluative judgment.
While, undoubtedly, Henley Constructions used the sign 1300HENLEY as a telephone number, it did so for promotional purposes—namely, to promote the name HENLEY as the source of the building and construction services that Henley Constructions was offering in trade. In this way, Henley Constructions was using 1300HENLEY as a sign to distinguish its services from the building and construction services provided by other traders.
The appellants point to the fact that, in some instances of use, 1300HENLEY was accompanied by the numerals (of a telephone number) to which HENLEY, as a word, corresponds. The appellants submit that this underscores the fact that 1300HENLEY was, in these instances, only being used as, and would have been understood as being used as, no more than the means of communicating a telephone number.
In our view, rather than supporting the primary judge’s finding, this fact supports a finding of trade mark use. Had Henley Constructions merely wished to communicate a telephone number, it could have done so. Rather, it took advantage of the opportunity presented by a telephone number to communicate the dominant element of its name as the source of building and construction services.
Further, contrary to the appellants’ submission, we do not accept that Henley Constructions used HENLEY, in this context, as merely the means by which a telephone number could be more easily recalled. Any word could have been used for that purpose. Henley Constructions chose to use the name HENLEY. This choice was obviously deliberately made for promotional purposes, and as a trade indicium.
For these reasons, we are persuaded that the primary judge erred in finding that consumers would see Henley Constructions’ use of 1300HENLEY as only a telephone number and not also as a sign designating the trade source of Henley Constructions’ building and construction services.
The appellants resisted the cross-appeal solely on the question of trade mark use. They did not contest the respondent’s contention that 1300HENLEY was deceptively similar to the registered marks.
The primary judge made no finding on the question. It falls to us to decide that question. It is sufficient for us to say that we are satisfied that 1300HENLEY is deceptively similar to the 820 mark. Indeed, there is much to be said for the view that 1300HENLEY is a use of HENLEY with merely added matter which does not avoid the consequences of trade mark infringement under s 120(1) of the Trade Marks Act: see Optical 88 at [99] and the cases there cited. We are satisfied that infringement has been established.
We think it is likely that the primary judge’s consideration of the respondent’s claims under the ACL and Trade Practices Act, without reference to Henley Constructions’ use of 1300HENLEY, was an oversight. Having regard to the primary judge’s findings in respect of Henley Constructions’ use of the Infringing Signs in the context of the respondent’s ACL claim, we are persuaded that Henley Constructions’ use of 1300HENLEY was of the same representational character. We are persuaded, therefore, that this was also a contravention of the ACL.
On the basis of the primary judge’s other findings concerning Mr Sarkis’s liability, we are satisfied that Mr Sarkis was a joint tortfeasor in respect of Henley Constructions’ infringing use of 1300HENLEY as a trade mark. On the same basis, we are also satisfied that Mr Sarkis was involved in Henley Constructions’ contravention of the ACL by reason of its use of 1300HENLEY.
Therefore, the respondent’s cross-appeal succeeds.
LEAVE TO APPEAL: COSTS
In separate reasons for judgment (Henley Arch Pty Ltd v Henley Constructions Pty Ltd (No 2) [2022] FCA 231 (CJ or the costs judgment)), the primary judge decided that the appellants should pay the respondent’s costs on an indemnity basis, and as a lump sum, from 11.00 am on the second business day after the “2019 Offer” was served on the appellants.
The “2019 Offer” was a formal offer of compromise made by the respondent on 26 November 2019 pursuant to r 25.14(3) of the Federal Court Rules 2011 (Cth), which provides:
(3)If an offer is made by an applicant and not accepted by a respondent, and the applicant obtains a judgment that is more favourable than the terms of the offer, the applicant is entitled to an order that the respondent pay the applicant’s costs:
(a)before 11.00 am on the second business day after the offer was served—on a party and party basis; and
(b)after the time mentioned in paragraph (a)—on an indemnity basis.
Note 1: Costs on an indemnity basis is defined in the Dictionary.
Note 2:The Court may make an order inconsistent with these rules—see rule 1.35.
The 2019 Offer was in these terms:
1. You consent to orders being made in the proceeding as follows:
(a)The Respondents, whether by themselves, their directors, officers, employees or agents or otherwise, be restrained from using as a trade mark, without the licence or authority of the Applicant, the following signs:
(i)Henley; and/or
(ii)Henley Constructions; and/or
(iii)Henley Constructions Pty Ltd; and/or
(iv)1300 HENLEY; and/or
(v) and or
(vi)any other sign that is substantially identical, or deceptively similar, to “HENLEY”,
in the course of trade in relation to building or construction services.
(b)The claim and cross-claim be otherwise dismissed with no order as to costs.
2.The applicant authorises the Respondents, up until 31 May 2020 and not beyond, to use:
(a) Henley; and/or
(b) Henley Constructions; and/or
(c) Henley Constructions Pty Ltd; and/or
(d) 1300 HENLEY; and/or
(e) the course of trade in relation to building or construction services, provided only that the Respondents will otherwise undertake all steps necessary and as expeditiously as possible to rebrand their business to a name that does not include “HENLEY” or any word that is substantially identical, or deceptively similar, to “HENLEY”.
This offer of compromise is open to be accepted for 14 days after service of this offer of compromise.
(Original emphasis.)
The primary judge was persuaded that r 25.14(3) was satisfied. At CJ[34], his Honour said:
34I find that the 2019 Offer of compromise was a genuine offer in the context of the proceeding, and ultimately judgment was more favourable for Henley Arch than the terms of the 2019 Offer. This is so because the offer gave up any claim to legal costs, had no injunction based on the ACL claim and contained a six-month transition period for the Respondents to stop using the impugned signs as a trade mark in respect of building or construction services. This is in contrast to the findings in the Liability Judgment, wherein I found that Henley Constructions infringed Henley Arch’s intellectual property rights with respect to a number of its trade marks, and found that Henley Arch was entitled to injunctions against Henley Constructions due to its contraventions of ss 18 and 29 of the ACL. Further, I ordered that the Respondents pay the Applicant’s costs of and incidental to the hearing of liability on the claim, and the costs of and incidental to the cross-claim. Henley Arch clearly obtained a judgment that was more favourable than the state of affairs in the 2019 Offer. As such indemnity costs should be awarded against the Respondents from 11am on the second business day after the 2019 Offer was served on the Respondents pursuant to r 25.14(3).
The appellants seek leave to appeal from the costs judgment. They contend that the primary judge erred in finding that the 2019 Offer satisfied r 25.14(3). They contend that the respondent did not obtain a judgment more favourable than the terms of that offer.
The appellants focus on clauses 1(a)(iv) and 2(d) of the 2019 Offer which, if accepted, would have restrained them from using 1300HENLEY as a trade mark, except for a limited period (on conditions). They point to the fact that the primary judge did not find that use by Henley Constructions of 1300HENLEY was trade mark use. They contend that this result, in their favour, was not a “minor” matter which could be put to one side in the primary judge’s consideration of r 25.14(3). The appellants submit that the respondent has the onus of establishing that the judgment it obtained was more favourable than the 2019 Offer, and that the respondent had not discharged that onus.
We are far from persuaded that the primary judge erred in his assessment of the 2019 Offer and whether the respondent obtained judgment that was more favourable than that offer. Be that as it may, we have found that the primary judge erred in not finding that Henley Constructions’ use of 1300HENLEY was an infringement of, at least, the 820 mark. We would not, therefore, interfere with the primary judge’s findings on the question of costs.
In the circumstances, we would not grant leave to the appellants to appeal from the costs judgment.
CONCLUSION
We have found that the appeal succeeds in part. We have also found that the cross-appeal succeeds.
The parties should now bring agreed orders giving effect to these reasons. We see no reason why the appellants should not bear the respondent’s costs of the appeal, the cross-appeal, and the appellants’ application for leave to appeal from the costs judgment.
If the parties cannot agree on the orders to be made, they should serve on each other a draft of the orders which they propose, supported by written submissions not exceeding three pages, within 10 days of the date of the appeal judgment. They should serve, within a further 7 days, any responding submissions, not exceeding two pages. Copies of the draft orders and the supporting and responding submissions are to be provided to the Full Court. Subject to further order, the question of the orders to be made on appeal will be determined on the papers.
I certify that the preceding three hundred and seventeen (317) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justices Yates, Rofe and McElwaine. Associate:
Dated: 28 April 2023
SCHEDULE A
Ref Dates of use Instances of use Services Evidence reference A. (first Henley Constructions logo) A.1 November 2009 to about February 2015 On website at (the Henley Constructions Website) Building and construction services for “small interior renovations” up to “large apartment blocks” with depictions of terraces, townhouses, two and three storey multi-dwelling residential apartment blocks and commercial buildings JML-13 Tender Bundle: 1555-1560 [Henley Constructions admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]
Ex A18
A.2 Early 2009 to February 2016
On signage at least at the following locations and times:
Early 2009 at 4-6 Marlborough Road, Homebush West, New South Wales;
(a) Early to mid-2012 at 15-17 Larkin Street, Camperdown, New South Wales;
(b) Around March 2015 at 456-458 Gardeners Road, Alexandria, New South Wales;
(c) February 2016 at 59-65 Chester Avenue, Maroubra, New South Wales.
Building and construction services in respect of a three to five storey multi-dwelling apartment block at the sites it was displayed JML-10 Tender Bundle: 1525
JML-44 Tender Bundle: 2055
Ex R22
(also at HQ building on door – JML-10 Tender Bundle: 1525-1526)
B. “henleyconstructions.com.au” (Henley domain name) B.1 November 2009 to about February 2015 On Henley Constructions Website Building and construction services for “small interior renovations” up to “large apartment blocks” with depictions of terraces, townhouses, two and three storey multi-dwelling residential apartment blocks and commercial buildings Admitted facts paragraph 7 Notice of Dispute Tender Bundle: 86, Ex A14
JML-13 Tender Bundle: 1555-1560 [Henley Constructions admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]
Ex A18
B.2 Early 2009 to February 2016 On signage at least at the following locations and times:
· Early 2009 at 4-6 Marlborough Road, Homebush West, New South Wales;
· Early to mid-2012 at 15-17 Larkin Street, Camperdown, New South Wales;
· Around March 2015 at 456-458 Gardeners Road, Alexandria, New South Wales;
· February 2016 at 59-65 Chester Avenue, Maroubra, New South Wales.
Building and construction services in respect of a three to five storey multi-dwelling apartment block at the sites it was displayed Ex R22
JML-44 Tender Bundle: 2055
B.3 February 2017 – August 2018 On Henley Constructions Website Building and construction services for “boutique and large-scale residential projects ranging from 10 to 500 units” Admitted facts paragraph 7 Notice of Dispute Tender Bundle: 86, Ex A14
JML-13 Tender Bundle: 1561-1581 [admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]
JML-14 – Henley Constructions Website at 27/2/17 [admitted accurately depict, in response to paragraph 36 of the First Notice to Admit, see paragraph 10 Notice of Dispute Tender Bundle: 86, Ex A14]
Ex A18
B.4 Since August 2017 On business cards Building or construction services in respect of single dwellings and multi-dwelling low rise and medium rise multi-storey apartment blocks Business cards Tender Bundle: 1532 [Business cards - admitted appearance paragraphs 4, 5 Notice of Dispute Tender Bundle: 86, Ex A14]
B.5 From about July 2018 On Instagram Building and construction services in respect of residential and commercial projects Ex A20 B.6 Since at least 15 February 2018 On Facebook Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks Ex A19
JML-91
C (second Henley Constructions logo) C.1 February 2017 – August 2018 On Henley Constructions Website Building and construction services for “boutique and large-scale residential projects ranging from 10 to 500 units” JML-13 Tender Bundle: 1561-1581 [admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]
JML-14 – Henley Constructions Website at 27/2/17 [admitted accurately depict, in response to paragraph 36 of the First Notice to Admit, see paragraph 10 Notice of Dispute Tender Bundle: 86, Ex A14]
Ex A18
C.2 Since the latest August 2017 On a brochure provided to the public in respect of the Aperture Apartments, Marrickville (or authorised such use) Building and construction services in respect of a multi-dwelling apartment block JML-10 Tender Bundle: 1530 [admitted accurately depict, in response to First Notice to Admit, see paragraph 6 Notice of Dispute Tender Bundle: 86, Ex A14]
PS-10
C.3 From October 2018 At the website at (or authorised such use) Building and construction services in respect of apartments at the “Aperture at Marrickville” construction project PS-7 Tender Bundle: 4088, 4089
D HENLEY CONSTRUCTIONS D.1 Around 28 March 2017 Advertisement in Inner West Courier Newspaper Building and construction services for “high-quality residential projects” and a multi-dwelling apartment block Advertisements annexed to Amended Defence at Tender Bundle: 4908, 4909 – and see admitted facts paragraph 12 Notice of Dispute Tender Bundle: 86, Ex A14
PS-10, Tender Bundle: 4131, 4132
D.2 Since at least 15 February 2018 On Facebook Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks Ex A19
JML-91
Ex A20 and PS-9 (Instagram)
D.3 From October 2018 At the websites (or authorised such use):
·
· at
·
· from July 2019,
Building and construction services in respect of apartments at the specified construction project PS-7 Tender Bundle: 4088, 4093, 4099, 4104
PS-10
D.4 From the latest February 2019 (but no earlier than 2 May 2018) At its website at the domain name Building and construction services in respect for residential projects and the multi-dwelling apartment block at the “Aperture Apartments” construction project JML-59 D.5 Since at least prior to 25 July 2019 Generally and for friends, including for Ali Hassan at the property at 23 The Grand Parade, Brighton-Le Sands, New South Wales 2216, including by display on hoarding at that site Building and construction services in respect of single dwelling structural alterations, single dwelling non-structural renovations, construction of new duplexes, and construction of new single dwellings JML-90 Tender Bundle: 5798, 5799 E HENLEY E.1 February 2017 – August 2018 On Henley Constructions Website (including vertical image of HENLEY sign at ground level of a building) Building and construction services for “boutique and large-scale residential projects ranging from 10 to 500 units” JML-13 Tender Bundle: 1558, 1569, 1570, 1575, 1580 [admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]
JML-14 – Henley Constructions Website at 27/2/17 Tender Bundle: 1585, 1586, 1590 [admitted accurately depict, in response to paragraph 36 of the First Notice to Admit, see paragraph 10 Notice of Dispute Tender Bundle: 86, Ex A14]
(before Feb 2017, see A18 page 2)
On Henley gallery website at JML-59 Tender Bundle: 2148, 2151
E.2 Around 28 March 2017 Advertisement in Inner West Courier Newspaper Building and construction services for “high-quality residential projects” and a multi-dwelling apartment block PS-10 E.3 Since around mid 2017 On the number plate of utes decorated with decals showing the third Henley Constructions logo (that have been parked at or in front of building and construction sites), including in the form HENLEY and H3NL3Y Building or construction services in respect of single dwellings and multi-dwelling apartment blocks PS-9 Tender Bundle: 4117 (Instagram image of “Fleet of vehicles” showing decal)
P Sarkis XXN T.321.23-34
E.4 From at least September 2018 At ground level on the front of the building and (up to a time before September 2019) at 128 Parramatta Road, Camperdown, New South Wales [when used in conjunction with THE HENLEY DISPLAY GALLERY and the third Henley Constructions logo] Building and construction services for an apartment block called “Aperture” or “Marrickville Luxury Apartments” JML-46
E.5 From October 2018 At the website at (or authorised such use) Building and construction services in respect of apartments at the “Aperture at Marrickville” construction project PS-7 Tender Bundle: 4088
E.6 From October 2018 At the website at (or authorised such use) Building and construction services in respect of multi-dwelling apartment block at the “Birdwood” construction project PS-7 Tender Bundle: 4093
F 1300 HENLEY F.1 February 2017 – August 2018 On Henley Constructions Website Building and construction services for “boutique and large-scale residential projects ranging from 10 to 500 units” JML-13 Tender Bundle: 1566-1568, 1570, 1574, 1577, 1579 [admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]
JML-14 – Henley Constructions Website at 27/2/17, Tender Bundle: 1583, 1584, 1587, 1589, 1590, 1593, 1594 [admitted accurately depict, in response to paragraph 36 of the First Notice to Admit, see paragraph 10 Notice of Dispute Tender Bundle: 86, Ex A14]
F.2 Since August 2017 On business cards Building or construction services in respect of single dwellings and multi-dwelling low rise and medium rise multi-storey apartment blocks JML-10 use on Business cards Tender Bundle: 1532 [Admitted appearance paragraphs 4, 5 Notice of Dispute Tender Bundle: 86, Ex A14]
(also at HQ building on door – JML-10 Tender Bundle: 1525-1526)
F.3 Since at least 15 February 2018 On Facebook Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks Ex A19 (pages 11, 13)
JML-91 Tender Bundle: 5807
G (third Henley Constructions logo) G.1 After 10 May 2017 On the side of up to around 15 “ute” vehicles (that have been parked at or in front of building and construction sites) Building or construction services in respect of single dwellings and multi-dwelling low rise and medium rise multi-storey apartment blocks Ex R22 (page 28)
Ex A19 (page 19)
Ex A20 (page 17)
JML-17
PS-9 Tender Bundle: 4117 (Instagram image of “Fleet of vehicles” showing decal)
G.2 After 10 May 2017 On hoarding at construction sites, in email signatures, and on business cards Building or construction services in respect of single dwellings and multi-dwelling low rise and medium rise multi-storey apartment blocks Ex A19
Ex A20 (page 12)
Ex R4
Ex R22
JML-17
JML-47 Tender Bundle: 2080
JML-49 Tender Bundle: 2092, 2093
JML-50 Tender Bundle: 2097
JML-51 Tender Bundle: 2104
JML-10 use on Business cards Tender Bundle: 1532 [Admitted appearance paragraphs 4, 5 Notice of Dispute Tender Bundle: 86, Ex A14]
PS-9
G.3 Since around mid-2017 On signage at the following sites:
(a) At least around June 2017, at the “Aleya” site, at 1 Sparkes Lane, Camperdown, NSW;
(b) At least around February 2018, at 233-235 Botany Road, Waterloo, NSW;
(c) At least from September 2018 to April 2019, at 81-83 Waterloo Road, Punchbowl, NSW;
(d) At least around September 2020, at the “Chanel” building at 27 Church Street, Camperdown, NSW;
(e) From at least March 2021, at the “Botany Living” site at 1445-1447 Botany Road, Botany, NSW
(f) In around August 2017, at a construction site at 507-509 President Ave, Sutherland, NSW
(g) In around September 2017, at the “Birdwood” construction site at 203 Birdwood Road, Georges Hall, NSW.
(h) In around October 2017, at a construction site at 1356-1362 Botany Road, Botany.
(i) Between at least May 2019 and February 2020, at a construction site at 9 Wrights Road, Drummoyne, New South Wales (for the “Quartier” project).
Building and construction services in respect of a multi-dwelling apartment block at each of those site (and in relation to the Punchbowl site in respect of building and construction of a multi-dwelling two storey aged care facility (St Charbel’s Care Centre) at that site). Ex R22
Ex A19
EX R4
Ex A20 (page 12)
JML-47 Tender Bundle: 2080
JML-49 Tender Bundle: 2092, 2093
JML-50 Tender Bundle: 2097
JML-51 Tender Bundle: 2104
G.4 From at least September 2018 At ground level on the front of the building and (up to a time before September 2019) at 128 Parramatta Road, Camperdown, New South Wales building and construction services for an apartment block called “Aperture” or “Marrickville Luxury Apartments” JML-46 Tender Bundle: 2070, 2071
Ex A20 (page 10)
G.5 From about July 2018 On Instagram building and construction services in respect of residential and commercial projects Ex A20
PS-9
G.6 Since at least 15 February 2018 On Facebook building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks Ex A19
JML-91
G.7 From July 2019 At the website (or authorised such use) building and construction services in respect of a three storey multi-dwelling building at the “Quartier” construction project at 9 Wrights Road, Drummoyne, New South Wales PS-7 Tender Bundle: 4105
G.8 Since at least prior to 25 July 2019 Generally and for friends, including for Ali Hassan at the property at 23 The Grand Parade, Brighton-Le Sands, New South Wales 2216, including by display on hoarding building and construction services in respect of single dwelling structural alterations, single dwelling non-structural renovations, construction of new duplexes, and construction of new single dwellings JML-90 Tender Bundle: 5798, 5799 G.9 From around September 2017 On completed low to medium-rise multi-dwelling apartment blocks, including at least:
(a) From September 2017, at the “Birdwood” building, at 203 Birdwood Road, Georges Hall, New South Wales;
(b) From August 2018, at the “Aleya” building, at 1 Sparkes Lane, Camperdown, New South Wales;
(c) From December 2018, at 59-65 Chester Avenue, Maroubra, New South Wales;
(d) From August 2019, at the Camperdown “HQ” building, at 128 Parramatta Road, Camperdown, New South Wales;
(e) From March 2020, at the “Quartier” building, at 9 Wrights Road, Drummoyne, New South Wales;
(f) From July 2020, at the “Noah” building, at Gladesville, New South Wales;
(g) From October 2020, at the “Chanel” building, at 27 Church Street, Camperdown, New South Wales.
building and construction services Ex R22
Ex A19
Ex R2
Ex R3
Ex R4
Ex A20 (pages 2, 3, 5, 10, 14, 15)
JML-91
PS-9 Tender Bundle: 4115
G.10 Since at least November 2019 on safety hats and hi-vis clothing Building and construction services Ex A19 (page 12)
Ex A20 (page 6)
H THE HENLEY DISPLAY GALLERY H.1 From at least September 2018 At ground level on the front of the building and (up to a time before September 2019) at 128 Parramatta Road, Camperdown, New South Wales Building and construction services for an apartment block called “Aperture” or “Marrickville Luxury Apartments” JML-46 Tender Bundle: 2072
Ex A20 (page 13)
PS-9 Tender Bundle: 4127, 4128
H.2 From October 2018 at the website at (or authorised such use) Building and construction services in respect of apartments at the “Aperture at Marrickville” construction project PS-7 Tender Bundle: 4089
H.3 From the latest February 2019 (but no earlier than 2 May 2018) at its website at the domain name Building and construction services in respect of residential projects and the multi-dwelling apartment block at the “Aperture Apartments” construction project JML-59 I I.1 From at the latest 2018 and ongoing On a crane located around 30m in the air including when lit up at night, including at:
(a) Between at least around September 2018 to November 2019, at St Charbel’s Care Centre, 81-83 Waterloo Road, Punchbowl, New South Wales ;
(b) From at least March 2021 at the “Botany Living” site at 1445-1447 Botany Road, Botany, New South Wales.
Building and construction services at each site and generally for building and construction services Ex R22 (pages 25, 27) I.2 From about 2018 On Facebook and Instagram Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks Facebook - Ex A19 (pages 2, 10)
Instagram - Ex A20 (pages 7, 8)
J “#henleyconstructions”, “#henleygallery”, “#henley”, images of the third Henley Constructions logo appearing on decals on vehicles, hoarding at constructions sites and safety/hi-vis clothing J.1 From about July 2018 On Instagram Building and construction services in respect of residential and commercial projects Ex A20 (#henleyconstructions all) (#henley at pages 11, 13)
PS-9 (#henleyconstructions)
PS-9 Tender Bundle: 4119 (#henleygallery),
PS-9 Tender Bundle: 4127, 4128 (#henley)
J.2 Since at least 15 February 2018 On Facebook Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks Ex A19
JML-91
K Henleygallery.com.au; HENLEY BUILT K.1 From the latest February 2019 (but no earlier than 2 May 2018) At its website at the domain name Building and construction services in respect of residential projects and the multi-dwelling apartment block at the “Aperture Apartments” construction project JML-59 (domain name henleygallery.com.au)
JML-59 (HENLEY BUILT) Tender Bundle: 2148, 2151
L HNLY L.1 Since around mid 2017 On the number plate of utes decorated with decals showing the third Henley Constructions logo (that have been parked at or in front of building and construction sites), including in the form 01-HNLY, 05-HNLY, 12-HNLY Building or construction services in respect of single dwellings and multi-dwelling apartment blocks PS-9 Tender Bundle: 4117 (Instagram image of “Fleet of vehicles” showing decal)
P Sarkis XXN T.321.23-34
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