Henley Constructions Pty Ltd v Henley Arch Pty Ltd

In this case, Henley Constructions Pty Ltd (the first appellant) and Henley Constructions Pty Ltd (the second appellant) appealed against the decision of the primary judge in Henley Arch Pty Ltd v Henley Constructions Pty Ltd (No 2) [2022] FCA 231 (the Liability Judgment). The respondent, Henley Arch Pty Ltd, is a builder of homes in several states of Australia. It has used a number of trade marks in the promotion of its business, including the word HENLEY. The first appellant, Henley Constructions Pty Ltd, is a property developer focusing on the construction of residential unit blocks in and around suburban Sydney. It used a number of signs and devices, including the words HENLEY and HENLEY CONSTRUCTIONS. The primary judge found that the first appellant’s use of each of the signs and devices noted above infringed each of the registered marks. The primary judge rejected the appellants’ defences to infringement, including those raised by their cross-claim. However, the primary judge was not persuaded that the first appellant’s use of the telephone number 1300HENLEY, or its use of number plates incorporating the element HENLY or HNLY, involved trade mark use.

The legal issues in the appeal related to the validity and infringement of the respondent’s registered trade mark HENLEY, and the appellants’ prior use defence. The court was required to decide whether the primary judge erred in finding that the word HENLEY was capable of distinguishing the respondent’s services under s 41 of the Trade Marks Act 1995 (Cth). The court was also required to decide whether the primary judge erred in finding that the first appellant had not established a defence under s 124 of the Trade Marks Act. In addition, the court was required to decide whether the primary judge erred in finding that the first appellant’s use of 1300HENLEY was not use as a trade mark.

The court found that the primary judge did not err in finding that the word HENLEY was capable of distinguishing the respondent’s services under s 41 of the Trade Marks Act. The court found that the primary judge did err in finding that the first appellant had not established a prior use defence under s 124 of the Trade Marks Act. The court found that the primary judge did not err in finding that the first appellant’s use of 1300HENLEY was not use as a trade mark.

The court allowed the appeal in part, and allowed the cross-appeal. The court ordered that the parties bring in agreed orders giving effect to these reasons for judgment. In the event that the parties cannot agree on the orders to be made, the court ordered that each party serve on the other a draft of the orders the party proposes, supported by written submissions not exceeding three pages; and that within a further seven days, each party serve on the other party responding submissions not exceeding two pages. The court ordered that the question of the orders to be made in this appeal be determined on the papers.