FEDERAL COURT OF AUSTRALIA

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

ORDERS

THE COURT ORDERS THAT:

1.    Within 14 days of the date of this order, the parties are to have conferred and provided to the Associate to Justice Anderson proposed minutes of orders to give effect to the Reasons for Judgment of Justice Anderson in this proceeding, and to timetable the steps required for a hearing on the relief sought by the applicant of an account of profits.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

ANDERSON J:

INTRODUCTION

Henley Arch’s claim

1    The applicant (Henley Arch) claims that the first respondent (Henley Constructions) has infringed, and continues to infringe, Henley Arch’s various registered and unregistered trade marks, and has also contravened ss 18 and 29 of the Australian Consumer Law (ACL) by using various marks branded with the name “Henley”, or variations of that name in Henley Constructions’ building, construction and design business. This includes Henley Constructions’ use of the marks “HENLEY CONSTRUCTIONS”, “HENLEY”, “THE HENLEY DISPLAY GALLERY”, and “1300HENLEY” as its contact telephone number, various logos containing the name “Henley Constructions” as well as a number of instances where this name was used such as websites, number plates and on social media platforms. Henley Arch also contends that the second respondent (Mr Sarkis) is jointly liable for Henley Constructions’ conduct.

2    Henley Constructions denies that it has infringed Henley Arch’s trade marks or engaged in conduct which contravenes ss 18 and 29 of the ACL.

Henley Constructions’ cross-claim

3    Henley Constructions, by its cross-claim, makes the following four claims. First, Henley Constructions submits that the trade marks registered by Henley Arch as at the priority date were non-distinctive and ought be cancelled under ss 41 and 88 of the Trade Marks Act 1995 (Cth) (TMA).

4    Second, Henley Constructions submits that Henley Arch’s trade marks were accepted on the basis of representations that were false in material particulars and ought be cancelled under ss 62(b) and 88 and of the TMA.

5    Third, and in the alternative to the first two grounds above, Henley Constructions submits that Henley Arch’s trade marks had not been used in the State of New South Wales between 7 October 2015 and 7 October 2018 (non-use period). Henley Constructions submits that there is considerable evidence that the building and construction industry is a State-based market rather than a national market and because, in its contention Henley Arch’s trade mark registration does not cover the State of New South Wales, these trade marks ought be subject to limitations under ss 92(4)(b)(i) and/or (ii), and ss 102(1)(b) and (2) of the TMA. Henley Constructions submits that the following limitations should be placed on the trade marks:

(1)    at the end of the class 37 services specification, the words “none of the above being in relation to multi-dwelling residential apartment buildings”, should be added. Because of this and other contentions raised in this proceeding, there was a good deal of evidence concerning whether the construction market can be segmented into different types of services, being the construction of detached or semi-detached houses, and the construction of “multi-dwelling residential apartment buildings”.

6    Fourth, Henley Constructions contends that, during the non-use period of between 7 October 2015 and 7 October 2018, the trade mark No. 1152818 (“HENLEY PROPERTIES” Device Mark) had not been used for the services for which it was registered in Australia or, in the alternative, in the State of New South Wales, and:

(1)    ought be wholly removed from the register under s 92(4)(b) and s 101 of the TMA; or

(2)    in the alternative, ought be subject to limitations under s 92(4)(b) and s 102 of the TMA which read:

(a)    registration does not cover the State of New South Wales; and

(b)    at the end of the class 37 services specification, the words “none of the above being in relation to multi-dwelling residential apartment buildings”, should be added.

Summary

7    This judgment proceeds as follows. First, I set out Henley Arch’s trade marks. Second, I set out the evidence of Henley Arch and the evidence of Henley Constructions. Third, I set out my findings on the evidence. Fourth, I consider the issue of trade mark infringement. Fifth, I consider the alleged contravention of the ACL. Sixth, I consider Henley Constructions’ defences. Seventh, I consider Henley Constructions’ cross-claims. Eighth, I consider any ancillary liability of the second respondent, Mr Patrick Sarkis. Ninth, I consider the issue of relief.

8    For the reasons that follow, there will be judgment for Henley Arch in this proceeding.

HENLEY ARCH’S TRADE MARKS

9    Since 1989, Henley Arch has traded under and by reference to the following trade marks which it has used to promote its business.

10    From 1989 until in or about 2005 (Initial Henley Devices):

11    From in or about 2005 (2005 Henley Devices):

12    From in or about 2017 (2017 Devices):

13    Henley Arch is also the owner of various trade marks registered under the TMA which each include the word “Henley”.

14    The following table provides the particulars of Henley Arch’s registered trade marks:

EVIDENCE

15    The parties in this proceeding have tendered voluminous evidence from a number of witnesses. Much of that evidence was of limited assistance. The key witnesses were Mr Harvey for Henley Arch, and Mr and Mrs Sarkis for Henley Constructions. The other witnesses were of marginal relevance to the critical issues in this proceeding. However, I have set out in some detail the evidence that was put before the Court, so that there can be an appropriate appreciation of the evidentiary matters which the parties considered were relevant to the issues in this proceeding.

16    I turn to set out the evidence of Henley Arch.

EVIDENCE OF HENLEY ARCH

17    The parties agreed upon a consolidated list of documentary evidence that was tendered in evidence at the trial of the proceeding (Tender Bundle). That list of documents is Annexure A to orders made in this proceeding on 11 May 2021.

18    Henley Arch tendered in evidence the affidavits of:

(1)    Damien Boyer affirmed 8 May 2019 and 6 May 2020;

(2)    John Edward Harvey sworn 10 May 2019, 20 December 2019 and18 June 2020;

(3)    Joanna Margaret Lawrence affirmed 10 May 2019, 31 October 2019 and 6 May 2020;

(4)    Patrick Prentice affirmed 5 June 2020;

(5)    Iain Brian Whyley affirmed 5 June 2020; and

(6)    Christopher Butler dated 23 March 2021.

19    Henley Arch’s witnesses relevantly gave the following evidence.

John Edward Harvey

20    Mr John Harvey has sworn three affidavits in this proceeding, being an affidavit sworn 10 May 2019 (First Harvey Affidavit), an affidavit sworn 20 December 2019 (Second Harvey Affidavit), and an affidavit sworn 18 June 2020 (Third Harvey Affidavit). Mr Harvey gave honest and considered evidence which I accept as a truthful account of events.

First Harvey Affidavit

21    In the First Harvey Affidavit, Mr Harvey deposed to the following matters.

22    In 1989, Mr Harvey co-founded Henley Arch and was a director up until his retirement on 21 March 2020.

23    Mr Harvey began his career in the building industry in May 1973 as a survey assistant with the Land Division of Hooker Corporation, undertaking both field and office training in all aspects of residential land development while also undertaking studies at night between 1974 and 1977 to obtain a Certificate of Survey Drafting and subsequently between 1978 and 1984 a Bachelor of Applied Science in Planning. In 1984, Mr Harvey transferred to the Housing Division of Hooker Corporation and was appointed Assistant Sales Manager until he resigned in June 1987 to undertake the role of General Manager with Merchant Builders. In 1989, Mr Harvey left Merchant Builders to establish Henley Arch with two co-founders, Peter Anthony Hayes and Robert Evan Bowen.

24    Mr Harvey, whilst a director of Henley Arch, was involved in the day to day management of the Henley Properties Group. The Henley Properties Group, at all material times, comprised Henley Arch and its subsidiaries. Mr Harvey was involved in the major business strategy decisions across the Henley Properties Group including in relation to the geographic markets and customer demographics targeted by the group. Mr Harvey’s evidence was that the customer base for the Henley Properties Group has always included owner-occupiers (that is, people who purchase and/or build a residence on land with the intention of living in it) but also a significant number of investors, who may reside in a particular State in Australia and choose to purchase land in another State and engage Henley Arch to construct a dwelling on that land. Mr Harvey said that many of the Henley Properties Group’s owner-occupier customers come from States other than Victoria, or from another country and choose to relocate in a new State and purchase land upon which to construct a new dwelling.

25    Mr Harvey deposed that, from around October 1989, Henley Arch began by selling “spec” homes to consumers in the south-east suburbs of Melbourne, Victoria. “Spec” homes are homes that Henley Arch constructed on land it owned, which it then sold to customers after construction of the house had been completed.

26    Since late 1993 or early 1994, Henley Arch began selling “contract homes”, being homes that Henley Arch would build on land owned by the customer, and broadened its operations throughout the Melbourne suburbs and surrounding the Geelong area. Mr Harvey’s evidence was that, by 1997, Henley Arch operated not only in Victoria, but in New South Wales, particularly in the greater metropolitan Sydney area and on the New South Wales central coast. Henley Arch was also operating in Queensland, in Brisbane, Gold Coast and the Sunshine Coast as well as having operations in South Australia.

27    By 2019, the Henley Properties Group had expanded to employ approximately 557 people including part-time and casual employees, and to have engaged approximately 1,320 contractors and subcontractors, throughout the residential building industry throughout Australia.

28    Mr Harvey deposed that Henley Arch employs marketing executives who develop and execute marketing strategies for the Henley Properties Group. Marketing teams exist both at a national level and also in each State market.

29    Mr Harvey deposed that, since around 2003, Henley Arch has promoted its business and the business of the Henley Properties Group at its website, www.henley.com.au (Henley Website).

30    Mr Harvey gave evidence that Henley Arch has, over time, used Google Analytics to track visits to the Henley Website. Henley Arch does not have access to Google Analytics data for the Henley Website prior to 2013, as visits to the Henley Website were not tracked prior to 2013. From 1 January 2013 to 17 January 2017, traffic data for the mobile version of the Henley Website was recorded separately from the desktop version, following which the mobile and desktop versions were combined into the current version of the Henley Website.

31    On or around 27 March 2019, Mr Harvey caused to be produced Google Analytics data for the Henley Website dating back to 2013. The information in the following table represents the traffic to both versions of the Henley Website from 1 January 2013 to 31 December 2018.

32    Mr Harvey exhibited to the First Harvey Affidavit evidence of the traffic to both the Henley desktop website and the mobile website from IP addresses in Victoria between 1 January 2013 and 31 December 2018. That data is collated in the following table:

33    Mr Harvey gave evidence that Henley Arch has used various social media platforms to promote the Henley Properties Group and its business throughout Australia. By way of example:

(1)    LinkedIn: The Group uses a LinkedIn account (https://www.linkedin.com/company/henley-properties), which as of 1 April 2019 was followed by 6,202 LinkedIn users. The earliest post on this page is from around April 2018.

(2)    Instagram: the Group uses a dedicated Instagram account (https://www.instagram.com/henley homes/), which as at 1 April 2019 had 7,524 followers and featured 250 posts. The earliest post on this page is dated 10 February 2017 and the profile was opened on or around 21 January 2017.

(3)    Pinterest: the Group uses a Pinterest page (https://www.pinterest.corn.au/HenleyAU/), which as at 28 March 2019 had 374 followers. The Group uses its Pinterest page to promote its services, including in relation to interior design, and to direct viewers of its Pinterest page to the Henley Website.

(4)    Facebook: the Group uses a Facebook account (https://www.facebook.com/Henley-Homes-928470900610618/). This account was created on 18 December 2018.

(5)    YouTube: since January 2017, the Group has used a dedicated “Henley Properties” YouTube channel, which as of 1 April 2019 was followed by 232 YouTube subscribers with its videos receiving a total of 13,284 views.

(6)    Vimeo: the Group publishes videos on Vimeo, a video streaming platform.

34    Mr Harvey’s evidence was that, since January 1990, Henley Arch has contracted with persons located throughout Australia to build and/or sell homes in Victoria. Henley Arch uses various premises and showrooms throughout Victoria to promote the business of the Henley Properties Group including a “Henley Design” showroom in Victoria, which has been operational since 21 August 2017, and five “World of Homes Experience Centres” located in Victoria, which have been variously operational since October 2014, April 2016, October 2016, January 2017 and January 2018.

35    Confidential annexure “JH-24” to the First Harvey Affidavit provides copies of Henley Arch’s trading results for its operations in Victoria from 2000 to 2017. These figures reflect the number of homes built and completed by Henley Properties Group on customer land, and “spec” homes settled during this period. The confidential annexures to the First Harvey Affidavit disclose that Henley Arch, since 2000, has built hundreds of homes expanding recently to in excess of 1,000 homes per annum in Victoria.

36    In cross-examination, Mr Harvey was taken to confidential annexure “JH-26” to the First Harvey Affidavit. Mr Harvey said that the purpose of this annexure was to demonstrate, over an extended period, how many houses located in Victoria had been sold by Henley Arch to people residing outside of Victoria, including in New South Wales. Mr Harvey accepted that there were aspects of this annexure, which is a spreadsheet, that were anomalous. First, there were entries in the spreadsheet which recorded that the “Settled Date” for a home was “Null”. Mr Harvey explained that these “Null” entries, in his experience with the records of Henley Arch, indicate that there was no settlement date entered into the relevant Henley Arch database, but that did not mean that no settlement occurred. Mr Harvey accepted that these “Null” entries were data entry errors. These errors occurred when a person did not enter the settlement date for the relevant home construction into the database. Mr Harvey accepted that he had not reviewed each of these “Null” entries to identify whether a data entry omission could explain each of them, but Mr Harvey’s experience was that “Null” entries generally indicated that a staff member had omitted to enter the relevant settlement date data into the relevant database.

37    Second, there were entries in this spreadsheet that had a settlement date of “1 January 1900”. Mr Harvey accepted that this was obviously an error. Mr Harvey said that he had not been able to identify the cause of that error.

38    As matters transpired during the trial, Henley Arch ultimately produced a summary document, which provided a summary of confidential annexure “JH-26”, including by identifying the number of “Null” entries and the entries which had a settlement date of “1 January 1900”. That summary document was Exhibit A23. It provides as follows:

39    Confidential annexure “JH-27” to the First Harvey Affidavit sets out extracts of building contracts and tender acceptance forms for the period 2001 to 2017 from customers having an address in New South Wales or the Australian Capital Territory (ACT) who purchased homes from, or had homes constructed by, Henley Arch on land located in Victoria. Confidential annexure “JH-27” included extracts of the following:

(1)    18 “authorised tender acceptance” documents dated between 10 May 2001 and 5 June 2008, for customers located in the ACT or New South Wales, in relation to construction projects located in Victoria. On its face, the “authorised tender acceptance” document appears to record the relevant customer’s acceptance of Henley Arch’s tender to construct the relevant project at the relevant property;

(2)    eight building contracts dated between 10 June 2005 and 14 December 2017, between Henley Arch and customers located in New South Wales, in relation to construction sites located in Victoria;

(3)    two “post contract variation” documents dated 8 November 2007 and 27 November 2007, concerning customers located in New South Wales, and in relation to houses located in Victoria; and

(4)    two contracts for the sale of real estate dated 24 September 2013 and 8 September 2016, between Henley Arch and a customer located in New South Wales, in relation to a property located in Victoria.

40    I should state that there were other documents which were included within confidential annexure “JH-27” to the First Harvey Affidavit that are not referred to in the summary above. These documents were not referred to because it was not clear whether the customer was based in New South Wales, or whether the relevant site was located in Victoria. In some cases, the date of the document was also not immediately apparent.

41    Mr Harvey deposed that the documents extracted as confidential annexure “JH-27” to the First Harvey Affidavit provide examples of relevant transactions between 2001 and 2017 and do not represent an exhaustive record of all transactions during this period. However, they do represent the way the contracts and tender acceptance forms appeared for all such customers at their respective dates.

42    Mr Harvey said that all customers of Henley Arch that purchased homes in Victoria entered into contracts with “Henley Arch” rather than a subsidiary of the Henley Properties Group, or an entity bearing the name of the site in which the homes were marketed for purchase. This was so regardless of the trading name Henley Arch used (such as “Clendon Vale Homes”, “Northridge Homes” or “MainVue”).

Queensland

43    Mr Harvey said that, from 1995 to 2001, the Henley Properties Group has contracted with persons to build and/or sell homes in Queensland through its licensee, and now wholly owned subsidiary, Henley Properties (Qld) Pty Ltd (Henley Queensland). Since 2001, the Henley Properties Group has contracted with persons to build and/or sell homes in Queensland under the trading name “Plantation Homes” which is a business name owned by Henley Queensland.

44    Mr Harvey’s evidence was that, for homes being built in Queensland, all customers of the Henley Properties Group have always entered into contracts with Henley Queensland. The Australian Securities and Investments Commission (ASIC) Current and Historical Organisation Extract for Henley Queensland obtained on 15 April 2019 records that Henley Queensland is a company registered on 4 April 1995 and, as at 15 April 2019, all of Henley Queensland’s shares were held by Henley Arch and Henley Queensland had six directors, including Mr Harvey.

45    Mr Harvey tendered in evidence the business records of Henley Queensland’s trading results from its operations in Queensland from 2000 to 2017. These figures reflect the number of homes built and completed by Henley Queensland on customer land, and “spec” homes settled during this period. The records were annexed as confidential annexure “JH-34” to the First Harvey Affidavit, and were summarised at confidential annexure “JH-35” of the First Harvey Affidavit. Those records show that, with the exception of 2002/2003, Henley Queensland in the period 2000/01 to 2017 completed more than 300 homes per year. In the period 2004 to 2007, Henley Queensland completed more than 400 homes in each year.

46    Mr Harvey tendered in evidence Google Analytics records which show the website visits from IP addresses in Queensland, to both the Henley Arch desktop website and the mobile website, for Queensland between 1 January 2013 and 31 December 2018. Set out below is a table which records that data.

South Australia

47    Since 1997, Henley Arch has contracted with persons located throughout Australia to build and/or to sell homes constructed by Henley Arch in South Australia. In South Australia, Henley Arch has traded under the business names “Clendon Vale Homes” and “MainVue”. All customers of Henley Arch located in South Australia have always entered into contracts with “Henley Arch”.

48    Mr Harvey tendered in evidence, from the business records of Henley Arch, its trading results for its operations in South Australia from 2000 to 2017. This data records the number of homes built and completed by Henley Arch on customers’ land, and “spec” homes settled during this period. These records were provided in confidential annexures “JH-38” and “JH-39” to the First Harvey Affidavit. Those records show that, in the period 2000/2001 to 2008/2009, Henley Arch consistently completed more than 100 homes per annum in South Australia. In the period July 2009 to 2012, Henley Arch completed more than 40 homes per annum in South Australia. In the years 2014, 2015, 2016 and 2017, Henley Arch respectively completed in South Australia 7 homes, 2 homes, 1 home and 17 homes.

49    Mr Harvey tendered in evidence Google Analytics records, which show traffic or visits to both the Henley desktop website and the mobile website, from IP addresses in South Australia between 9 January 2013 and 31 December 2018. That data is recorded in the following table.

New South Wales

50    Mr Harvey gave evidence that, between February 1995 and 2008, Henley Arch, through its wholly owned subsidiary, Henley Properties (NSW) Pty Ltd (Henley NSW), contracted with persons located throughout Australia to build and/or to sell homes constructed by the Henley Properties Group in New South Wales.

51    From 2008 until 2010, the Henley Properties Group contracted with persons located throughout Australia to build and/or to sell homes constructed by Henley Arch and located in New South Wales. Since 2010, Henley Arch, through its wholly owned subsidiary, Edgewater Homes Pty Ltd (Edgewater), has contracted with persons located throughout Australia to build and/or to sell homes constructed by Edgewater in New South Wales.

52    Henley NSW was registered as a company on 15 December 1993 and was deregistered on 15 December 2017. Edgewater was registered as a company on 12 January 2010 and is the subsidiary of Henley Arch which conducts the business of the Henley Properties Group through New South Wales.

53    Mr Harvey gave evidence that Henley Arch and Henley NSW have, from time to time, registered Australian business names in New South Wales as follows:

(1)    the business name “Henley Property Group” was first registered in New South Wales jointly by Henley Arch and Henley NSW on 6 March 1997, and was cancelled on 15 May 2016;

(2)    the business name “Henley Homes” was first registered in New South Wales jointly by Henley Arch and Henley NSW on 13 April 1995, and was cancelled on 23 June 2018; and

(3)    the business name “Henley Properties – A World of Homes” was first registered in New South Wales jointly by Henley Arch and Henley NSW on 26 October 1998.

54    Mr Harvey gave evidence that, in or about late 2000, Henley Arch experienced some quality control issues in New South Wales. These issues were the subject of extensive media coverage in New South Wales, including Henley Arch featuring on the television show “A Current Affair”. Henley Arch had encountered problems with the Henley Properties Group expanding too quickly in New South Wales at a time when there was a shortage of quality tradesmen due to the property boom prior to the introduction of the Goods and Services Tax in Australia on 1 July 2000. Mr Harvey said that, due to reputational damage and changes to the industry at that time, the Henley Properties Group had decided to significantly reduce its operations in New South Wales. The New South Wales office remained open primarily for the purposes of undertaking maintenance work as part of Henley Arch’s warranty obligations. As a consequence, during the period 2001 until 2017, the Henley Properties Group constructed a relatively small number of houses in New South Wales.

55    This is evident from confidential annexures “JH-50” and “JH-51” to the First Harvey affidavit. The following table shows the number of houses completed in New South Wales by Henley Arch between 2000/2001 and 2017.

56    Mr Harvey tendered in evidence Google Analytics records which showed traffic or visits to the Henley desktop website and the mobile website, from IP addresses in New South Wales between 1 January 2013 and 31 December 2018. That data is collated in the following table:

The 13 April 2017 letter to Henley Constructions from Henley Arch

57    Mr Harvey deposed that on 22 February 2017, Mr Harvey first became aware of the existence of Henley Constructions and its website at www.henleyconstructions.com.au. On 22 February 2017, a then employee of James Hardie, Mr Damien Boyer, sent an email to a representative of Henley Arch, Mr Simon Gough. Mr Boyer provided a hyperlink to a news story which referred to Henley Constructions. Mr Boyer stated in his email that Henley Constructions “[m]ight be just another business in Sydney that goes by the name of Henley?”. Mr Gough forwarded this email to Mr Harvey on 22 February 2017. Mr Gough stated “[t]hought you [ie Mr Harvey] may like to know about this – Henley Constructions?”.

58    Mr Harvey deposed that he is not aware of any person employed by the Henley Properties Group, or any contractor engaged by the Henley Properties Group, prior to 22 February 2017, having knowledge of Henley Constructions and its activities, or the Henley Constructions website.

59    On 13 April 2017, Mr Harvey on behalf of Henley Arch sent the first letter to Henley Constructions in relation to this matter. That letter stated:

Dear Mr Sarkis

UNAUTHORISED USE OF HENLEY TRADE MARK

We have recently become aware that your company, Henley Constructions Pty Ltd, is advertising and providing property development and building services in relation to residential properties in New South Wales through its website at www.henleyconstructions.com.au. We became aware of this conduct through one of our suppliers who mistakenly thought that your company was our company, or related to our company.

As you would be aware, Henley Arch Pty Ltd (trading as Henley and Henley Properties) is one of Australia's largest and most well-known homebuilders, and has been operating for more than 27 years under the “Henley” name. The company name Henley Arch Pty Ltd was first registered in October 1989. The business names HENLEY HOMES and HENLEY PROPERTIES were registered by Henley and its wholly owned subsidiaries in 1995. Henley is also the owner of Australian Trade Mark Registration No. 1152820 for HENLEY in classes 37 and 42 covering “building and construction services” and “architectural, engineering, design, drafting and interior design services”. Henley has continuously used this trade mark since 1989. We are also the owner of the domain name www.henley.com.au, from which we have operated our website and promoted our services since at least 2003.

The name “Henley Constructions” is very similar to, and likely to be mistaken for, “Henley”. On your company’s website and at your new business premises, the business is also referred to simply as “Henley”. Your use of “Henley Constructions” and “Henley” is likely to give the impression that your company is our company (for example, a division or subsidiary of Henley) and/or Henley’s services are your company’s services and/or that your company is licensed by Henley to use the “Henley” name, when that is not the case. As evidenced by the enquiry from one of our suppliers mentioned above, actual confusion has and is occurring in the construction market.

It is our view that your use of “Henley Constructions” and “Henley” infringes our trade mark and is also misleading. These are matters that can be the subject of legal action against your company.

We consider that this matter can be resolved by you agreeing to change your company’s name and cease using “Henley” in the promotion of your services. We would be open to allowing a grace period for you to inform your customers of the name change ahead of it taking effect.

In the meantime, we reserve our right to take whatever further action is necessary to protect our rights, including seeking injunctions and damages.

I look forward to your response by no later than 27 April 2017. Please direct your response to this letter to me … Should a positive response not be received by that date, I will put this matter into the hands of our lawyers.

…

The Second Harvey Affidavit

60    In the Second Harvey Affidavit, Mr Harvey deposed that he is not aware of any intention on the part of the Henley Properties Group at any time to “geographically limit” its use of “Henley” in Australia. Mr Harvey stated that, while in the First Harvey Affidavit he discussed the reduction of the Henley Properties Group’s on-the-ground operations in New South Wales that occurred in or around 2001, the Henley Properties Group never ceased, nor intended to cease (and nor did he, as a Director of the Henley Properties Group, intend the Henley Properties Group to cease), providing services under the “Henley” brand in relation to customers in New South Wales.

61    Mr Harvey deposed that the building, sale and/or maintenance of homes located in New South Wales by the Henley Properties Group in or around 2006 was completed under the “Henley” brand (or a brand containing “Henley”). That is, the promotional and customer-facing materials displayed “Henley” alone or in conjunction with other words. In respect of the “Edgewater” brand, it was only used as a key brand in New South Wales (as distinct from the name of a particular product range sold under the core “Henley” brand) from approximately 2010 onwards (which is around the time Edgewater Homes Pty Ltd was registered as a company and obtained a building licence in New South Wales).

62    In relation to operations in Queensland, Mr Harvey deposed that while “Plantation Homes” was a key brand for the Henley Properties Group in Queensland from around this time, Henley Queensland’s customer-facing materials usually stated that Plantation Homes was a division of Henley Queensland, and customer-facing materials often contained references to the “Henley” brand.

63    In relation to operations in South Australia, Mr Harvey deposed that, at least since 1997, the key name used on promotional and other customer-facing material by the Henley Properties Group in South Australia has been “Henley” (or “Henley Properties South Australia”), with “Clendon Vale Homes” and “MainVue” being used as sub-brands for particular ranges in the Henley Properties Group’s “order homes business” (that is, homes built to order). The sub-brands “Summerhill Homes” and “Ready Built” have been used for the Henley Properties Group’s “spec” homes business in South Australia, often accompanied by the words “By Henley”. Mr Harvey deposed that the Henley Properties Group has used the following sub-brands in South Australia at the dates indicated:

(1)    “Clendon Vale Homes” from in or around 2009 to 2013 for a range of homes on offer in the Henley Properties Group’s order homes business;

(2)    “Summerhill Homes By Henley” from around 2008 to 2012 for the Henley Properties Group’s spec homes business;

(3)    “Ready Built By Henley” from around 2012 to 2019 for the Henley Properties Group’s spec homes business; and

(4)    “MainVue” from around 2012 to 2015 for a range of homes on offer in the Henley Properties Group’s order homes business.

64    However, Mr Harvey notes that the builder of the Henley Properties Group’s houses sold in South Australia has always been Henley Arch, and the name “Henley Properties South Australia” has always been displayed on promotional and other customer-facing material for the Henley Properties Group’s order homes business.

65    As to Western Australia and Tasmania, confidential annexure “JH-69” to the Second Harvey Affidavit included extracts from building contracts and tender acceptance forms signed by customers having an address in either Western Australia or Tasmania, in relation to the sale and/or construction of homes at sites located in Victoria. These extracts are examples of such transactions between 2001 and 2009 and do not represent an exhaustive record of such transactions during this period. However, they do represent the way the contracts and tender acceptance forms appeared for all such customers at their respective dates.

Third Harvey Affidavit

66    Mr Harvey also gave evidence concerning the inputs in the construction process for Henley Arch homes, the various trades and sub-contractors used, and the different types of construction undertaken in the range of building types which Henley Arch offers to its customers or constructs to sell to its customers. Mr Harvey gave evidence about the cost estimation process used by Henley Arch in relation to the construction of homes built by Henley Arch. Mr Harvey set out the various categories of activities which are required to complete the construction of a Henley Arch home, such as site excavation, engineering, plumbing and electronic connection. Mr Harvey said that, in his experience, the essential inputs and processes are common to the construction of most buildings that are designed to be occupied, whether they are detached single dwelling houses, rows of terrace houses/townhouses, low-rise apartment buildings, and high-rise apartment buildings. Mr Harvey said that building a multi-storey apartment building is essentially the same process as building a detached single dwelling house or a row of terrace houses, save that apartments are built on top of each other, rather than side by side.

67    Mr Harvey deposed that Henley Arch’s primary role as the builder of its homes, including single dwelling and multi-dwelling constructions, is to manage and supervise the project. In Mr Harvey’s experience, this is the same role that a builder has in construction projects for a detached single dwelling house, row of terrace houses/townhouses, low-rise apartment buildings or high-rise apartment buildings. This involves coordinating the suppliers and subcontractors, including determining when they are required (and the stage of the construction process they need to be on site), calling them to let them know when they are required, and giving them high level instructions of what is required and the outcome that is expected (including providing them with the design documentation relevant to their supply). Mr Harvey stated that the builder relies on the technical expertise of its suppliers and subcontractors in the actual performance of their roles in the project.

68    The Third Harvey Affidavit also set out a selection of Henley Arch’s multi-dwelling residential developments.

Cross-examination of Mr Harvey

69    Mr Harvey, in cross-examination, said that he was one of the founders of the company in 1989, and participated in the selection of the name Henley Arch. Mr Harvey said, at the time of selecting the name Henley Arch (presumably in or around 1989 when Henley Arch was founded), he could not recall as to whether he was aware of any geographic locations in Australia with the word “Henley” in their name. He accepted that Henley was a surname, but this was not something that he had considered at the time.

70    In December 2006, when Henley Arch filed its first set of trade mark applications, Mr Harvey was aware that there were other geographic locations within Australia with the word “Henley” in their name. He was not aware of other developers such as W P Property Group in Adelaide constructing the Henley Apartments at Henley Beach nor was Mr Harvey aware that Mirvac had developed a development known as the Henley Brook development in Henley Brook, a suburb of Perth.

71    Mr Harvey accepted that, since March 2020, he has not had involvement in a management capacity at Henley Arch. Mr Harvey was cross-examined about the scope of his authority on behalf of Henley Arch and its subsidiaries to give evidence about their future intentions. Mr Harvey said that a representative of the majority shareholder of Henley Arch had asked Mr Harvey to stay involved in the Henley Arch business after Mr Harvey had resigned. I should state here that I do not accept that Mr Harvey did not have authority, or was otherwise not authorised, to give evidence about Henley Arch’s business or its future intentions. The fact is that Mr Harvey has sworn three affidavits in this proceeding, all of which were filed by Henley Arch. Mr Harvey gave evidence and was cross-examined about the contents of those affidavits. In these circumstances, I do not accept that Mr Harvey is not authorised to give evidence on behalf of Henley Arch, or as to Henley Arch’s future intentions.

72    Mr Harvey accepted that Henley Arch started construction of homes in about October 1989. The homes were detached homes. Subsequently, Mr Harvey said that Henley Arch had built both detached and semi-detached homes as time progressed. Mr Harvey accepted that the dwellings constructed by the Henley Properties Group are overwhelmingly detached and semi-detached houses. Mr Harvey also accepted that, as a general proposition, Henley Arch’s promotional material has, overwhelmingly been directed to the sale of detached and semi-detached houses.

73    Mr Harvey, however, did not accept that Henley Arch’s promotional materials were directed to owner-occupiers. Mr Harvey said that Henley Arch’s customers were both owner-occupiers and investors. Mr Harvey did not accept that the majority of the people purchasing Henley Arch houses are owner-occupiers. Mr Harvey said that Henley Arch’s customers are a combination of owner-occupiers and investors.

74    Mr Harvey said in cross-examination that Henley Arch promoted its business as the business of the Henley Properties Group, and the purpose of the Henley Website since 2003 had been to promote the business of the Henley Properties Group and its subsidiaries.

75    In cross-examination, Mr Harvey was taken to an extract of the Henley Properties Group website as at 28 March 2005. Mr Harvey accepted that website drew attention to the Henley Properties Group’s business in Victoria, South Australia and Queensland. In respect of Queensland, visitors to the website were invited to visit a “Plantation Homes” display home in Queensland. Mr Harvey accepted that “Plantation Homes” was the Henley Properties Group’s brand in Queensland.

76    Mr Harvey was then taken to a version of the Henley Properties Group website as it appeared on 30 November 2006. The date of 30 November 2006 was approximately 13 days before Henley Constructions was incorporated and approximately 18 days before Henley Arch applied to register as trade marks “HENLEY”, “HENLEY PROPERTIES” and “HENLEY WORLD OF HOMES”. Mr Harvey accepted that, as at 30 November 2006, the Henley Properties Group website welcomed visitors from Victoria, South Australia and Queensland. Mr Harvey accepted that in Victoria and South Australia, visitors to the website were directed to a “Henley Display”, whereas for Queensland, website visitors were directed to a “Plantation Homes Display”.

77    Mr Harvey was then taken to a snapshot of the Henley Properties Group website as at 22 June 2013. Mr Harvey accepted that this website also segmented Henley Properties Group’s business by reference to three States, being Victoria, Queensland and South Australia.

78    Mr Harvey was then taken to a snapshot of the Henley Properties Group website as at 21 December 2014. Mr Harvey accepted that the website at this date made reference to two locations, being Victoria and Queensland. Mr Harvey said that, if a customer visiting this website wanted to visit a display home in a particular State, this website enabled the customer to identify where that display home was located in Victoria and Queensland. Mr Harvey accepted that this website showed different brands being used in different States. In Victoria, the brands “Henley”, “MainVue Homes”, “Ready Built by Henley” and “Henley House and Land” were used. In Queensland, “Plantation Homes”, “Ready Built by Plantation Homes” and “Plantation House and Land” were used. Mr Harvey accepted that, at this time, the Henley Properties Group stated that Henley Arch was “[o]perating in Victoria as Henley Properties and Main Vue Homes, and in Queensland as Plantation Homes”. Mr Harvey accepted that was a correct statement.

79    Mr Harvey said that, whilst Henley Arch operated under different brand names in different States (i.e. in Victoria, “Henley”, “MainVue Homes”, “Ready Built by Henley” and “Henley House and Land”; and, in Queensland, “Plantation Homes”, “Ready Built by Plantation Homes” and “Plantation House and Land”), Henley Arch’s market was not tied to a particular State. Mr Harvey said that the references to different States indicates where Henley Arch’s display homes are located.

80    Mr Harvey said that it was Henley Arch who determined the marketing strategy nationally which was then implemented by each State office. The marketing strategy was both national and international and not restricted to State-based marketing. Henley Arch had customers who resided overseas who were sent Henley Properties Group marketing material and were subsequently sent tenders and quotations that led to a contract being signed for the construction of a dwelling on land which they owned in Victoria (if the Henley brand was being used) or in Queensland (if the Plantation Homes brand was being used). Mr Harvey said that Henley Arch’s market was anywhere across Australia and overseas.

81    When taken to snapshots of the Henley Properties Group website taken on 11 February 2019 (at annexure “JH-17” to the First Harvey Affidavit) Mr Harvey accepted that the Henley Properties Group website promoted the business of the Henley Properties Group and that there were references to Victoria, South Australia and Queensland but not a reference to New South Wales. Mr Harvey accepted that, in Queensland, increasingly over time, Plantation Homes had been promoted as a standalone business, including using its own website. Mr Harvey said that Plantation Homes was associated with Henley Arch, and was presented as part of the Henley Properties Group both in documentation and marketing material that was offered to customers. Mr Harvey said that in Queensland, Plantation Homes would undertake construction of a dwelling with direction from head office, which is Henley Arch in Melbourne.

82    In cross-examination, Mr Harvey was taken to screenshots of the Henley Website as it appeared on 3 March 2019 (Exhibit R18). Mr Harvey accepted that, under the “Where We Build” section, the website stated “Henley builds across the greater Melbourne metropolitan area as well as Geelong”. Mr Harvey was also taken to a separate section of this website which was titled “Featured estates we build in”. Mr Harvey accepted that all of these estates were located in Victoria. Mr Harvey was then taken to another part of this website titled “Our Displays”. Mr Harvey accepted that this page related to homes in Melbourne.

83    Mr Harvey was then taken to a snapshot of the Henley Website as at 2 April 2021 (Exhibit R19). Mr Harvey accepted that this snapshot of the website was promoting “Single Storey Home Designs”. Mr Harvey accepted that this website contained a map of where such homes are located, and that they were all located in Victoria. Mr Harvey accepted that the “Where We Build” section of this website contained a map of locations in Victoria. Mr Harvey accepted that the “Featured estates we build in” section of this website showed estates located in Victoria.

84    In cross-examination, Mr Harvey accepted that the Henley Properties Group promotes itself by reference to various social media platforms. Those social media platforms include LinkedIn, Instagram, Pinterest, Facebook, YouTube and the Vimeo streaming platform. Mr Harvey accepted the screenshot pages that he had been taken to from these social media platforms (at annexure “JH-20” to the First Harvey Affidavit) featured Victoria and Queensland initiatives or employees located in Victoria, but did not feature matters associated with the Henley Properties Group’s business in New South Wales. Mr Harvey accepted that this material (at annexure “JH-20” to the First Harvey Affidavit), being the social media platforms used to promote the Henley Properties Group business, in fact promotes the business insofar as it operates in Victoria. Mr Harvey accepted that he did not annex to his affidavits material relating to social media platforms operated by other brands within the Henley Properties Group, including Edgewater and Plantation Homes (which relate to operations in New South Wales and Queensland respectively). When asked why he had not provided such material, Mr Harvey said he could not recall. Mr Harvey denied that he had not annexed such material to his affidavits because it was inconvenient to Henley Arch’s case. Mr Harvey said that other brands in the Henley Properties Group, such as Edgewater and Plantation Homes, promoted those businesses in New South Wales and Queensland respectively, using different websites and different social media platforms. Mr Harvey said he did not deliberately omit from his affidavits material relating to those sites and social media platforms.

85    Mr Harvey said that the Henley Properties Group used a combination of platforms to promote its business, and this advertising included references to Edgewater Homes in New South Wales, Plantation Homes in Queensland and Henley Arch in Victoria respectively. Mr Harvey said he did not deliberately omit material from his affidavits relating to those websites and social media platforms.

86    Mr Harvey was taken to an extract of the Edgewater Homes Facebook page. That page stated that Edgewater Homes offers “fixed price house and land contracts” in New South Wales. Mr Harvey accepted that statement was a correct description of Edgewater Homes’ product offering.

87    Mr Harvey was then taken to the “Henley Homes” Facebook page. Mr Harvey accepted that this page made various references to the Victorian market, including making reference to the “Grand Final long weekend” in Victoria.

88    Mr Harvey accepted that, in the First Harvey Affidavit, Mr Harvey set out the Henley Properties Group’s operations in Victoria, Queensland and South Australia and, in doing so, annexed actual contracts entered into by the entities operating in those States in relation to the construction of homes. Mr Harvey accepted that, when discussing the Henley Properties Group’s operations in New South Wales in the First Harvey Affidavit, Mr Harvey did not annex a copy of any contracts entered into by the relevant entity operating in New South Wales.

89    Mr Harvey accepted in cross-examination that, as a consequence of the adverse publicity in 2000 stemming from problematic workmanship undertaken by Henley Arch in New South Wales, the business in that State was substantially wound down. However, maintenance operations were still undertaken in that State for existing dwellings to meet warranty obligations.

90    Mr Harvey in cross-examination was also taken to confidential annexure “JH-49” to the First Harvey Affidavit. That annexure is a memorandum from the Directors of the Henley Properties Group to all staff of the Henley Properties Group dated 31 May 2001. It states:

Henley continues to maintain it’s [sic] status as the largest home builder in Australia, continuing to strengthen our position in our largest market Victoria. Our strength is reflected in our inclusion in Australia’s Top 500 privately owned companies, we are ranked No 44.

We constantly review the potential of each of our operations and we have decided to restructure the operations in NSW. This decision is based on a number of variables including the price and availability of land in Sydney, consistency of building trades and supply and the appropriateness of Henley’s products in Sydney.

This decision will necessitate a temporary suspension of sales of its project homes in the NSW market. As a result, it has been necessary for Henley to reduce the number of employees in departments servicing the sales front of the business.

The NSW branch including maintenance and warranties will continue to operate servicing and building homes for our current clients. Any client inquiring regarding this strategic decision can be assured these decisions are not related to our other state operations and were in no way a result of the companies [sic] financial position.

Should the client have further questions please refer the call to your business or state manager.

91    It was put to Mr Harvey in cross-examination that this memorandum reflected a reality that, in May 2001, for all intents and purposes, the Henley Properties Group business, insofar as it operated in New South Wales, was being put into a “deep freeze”. Mr Harvey accepted that its “contract housing business” was in May 2001 put into a “deep freeze”. Mr Harvey accepted that this was reflected in confidential annexure “JH-50” to the First Harvey Affidavit, being the trading results for the Henley Properties Group’s New South Wales operations in the period 2000 to 2017. Those results showed that, in 2006, Henley Properties Group constructed one house in New South Wales. Mr Harvey also accepted in cross-examination that this one house construction in 2006 was not a significant reduction from the 10 houses constructed in New South Wales in 2005.

92    It was in these circumstances that Mr Harvey was taken to confidential annexure “JH-48” to the First Harvey Affidavit, being copies of communications between the Henley Properties Group and its customers in relation to homes built by Henley Arch in New South Wales dated between 1999 and 2013. That annexure contains communications dated in 1999, 2000, 2001, 2002, 2012 and 2013. Mr Harvey was asked whether the gap in these documents between 2002 and 2012 indicated that there was nothing in between those years that Mr Harvey could identify to evidence commercial activity in New South Wales in that period. Mr Harvey said he had no doubt there would have been documents which could evidence such commercial activity, but they had not been annexed to his affidavit.

93    Mr Harvey was also cross-examined about the Second Harvey Affidavit. In the Second Harvey Affidavit, Mr Harvey deposed that he was not aware of any intention on the part of the Henley Properties Group in 2008, or at any time, to “geographically limit” its use of “Henley” in Australia. Mr Harvey stated that his recollection of the Henley Properties Group’s intentions, as at 2008, was that Henley Arch intended to extend its use of the trade mark “Henley” in the future to additional television advertising and promotional campaigns, on-going publication and distribution of brochures and fliers, billboard content design and construction, display signage and also print advertising and promotional posters. It was put to Mr Harvey that he had not annexed to his affidavit any document to support this statement in his affidavit. Mr Harvey stated that there were many meetings regarding the marketing strategy, and, at that time in 2008, most of those discussions would have been, in the main, verbal. Mr Harvey said he had attempted to identify documents to support these statements, but Henley Arch had moved offices on several occasions and, essentially, any such records could not be located. However, Mr Harvey said that, despite not locating any such documents, Mr Harvey could say with absolute confidence that there was, in 2008, a marketing strategy for the Henley Properties Group. It was put to Mr Harvey that, in truth, he had identified a hole in Henley Arch’s case, and he had sought to fill that hole by assertions in the Second Harvey Affidavit that are unsupported by documents. Mr Harvey said he did not agree with that proposition.

94    Mr Harvey was then cross-examined about the Third Harvey Affidavit. In the Third Harvey Affidavit, Mr Harvey stated that building a multi-storey apartment building is essentially the same process as building a detached single dwelling house or a row of terrace houses, save that apartments are built on top of each other, rather than side by side. In cross-examination, Mr Harvey accepted that, while he was aware of the National Construction Code, he could not say “off the top of his head” what the different classes are in the National Construction Code, save that Mr Harvey was aware that there are different classes in that Code.

95    In the Third Harvey Affidavit, Mr Harvey also stated that, at least as early as 2000, Mr Harvey planned for Henley Arch to enter the construction and marketing of multi-dwelling developments (that is, any of townhouses/terrace houses side by side, low rise and high rise apartments) under the “Henley” brand (or using a sub-brand under, and in conjunction with, the “Henley” brand). In cross-examination, Mr Harvey accepted that, as early as 2000, Henley Arch did not necessarily intend to construct high-rise apartments. Mr Harvey said that, in December of 2006, Henley Arch did not intend to construct high-rise apartments. Mr Harvey also stated that, at no time after 2006, has Henley Arch intended to construct high-rise apartments. Earlier in his evidence, Mr Harvey had stated that “high-rise”, to Mr Harvey, means “very tall” buildings such as “20 storeys or 30 storey apartment buildings” (Transcript, p 221).

96    As mentioned above, I accept the entirety of Mr Harvey’s evidence as a truthful account of events and matters on which he gave evidence.

Joanna Margaret Lawrence

Ms Lawrence’s evidence in chief

97    Ms Lawrence has affirmed four affidavits in this proceeding, being an affidavit affirmed 10 May 2019 (First Lawrence Affidavit), an affidavit affirmed 31 October 2019 (Second Lawrence Affidavit), an affidavit affirmed 20 December 2019 (Third Lawrence Affidavit), and an affidavit affirmed 5 June 2020 (Fourth Lawrence Affidavit).

98    Ms Lawrence is a legal practitioner employed by Henley Arch’s solicitors, Ashurst. Ms Lawrence was admitted as a legal practitioner in New Zealand on 10 June 1994 and in the State of Victoria on 7 July 1999. Ms Lawrence has practised as a trade mark lawyer in New Zealand for approximately three years and in Australia for approximately seventeen years (that is, approximately twenty years less two years and seven months of parental leave).

99    Ms Lawrence gave honest and considered evidence. I accept Ms Lawrence’s evidence in respect to the steps that she took to investigate the use by Henley Constructions of the mark Henley Constructions with and without the relevant device during the period in or around 2007/2008 up until in or around 2019. Ms Lawrence’s evidence was that, after the cease and desist letter was sent to Henley Constructions by Henley Arch on 13 April 2017, Henley Constructions “ramped up” the activity and content on its website. This was evident, Ms Lawrence said, by the screenshots of the Henley Constructions website which were exhibited to her affidavits.

100    On 24 July 2017, Ms Lawrence requested a private investigator, Trade Mark Investigation Services (TMIS), a division of Risk & Security Management Ltd, to investigate the use of the trade mark “Henley” by Henley Constructions. On 11 August 2017, Ms Lawrence received TMIS’s report. The TMIS report attached the following items concerning Henley Constructions’ use of “Henley Constructions” or “Henley” in or around August 2017.

101    First, the report attached copies of photographs of Henley Constructions’ place of business at unit 23, 72 Parramatta Road, Camperdown, New South Wales. Those photographs included the following photographs:

102    Second, the TMIS report attached business cards for Mr Patrick Sarkis and Mr John Nasr of Henley Constructions. One side of the business card appeared as follows:

103    The other side of the business card appeared as follows:

104    The report also attached advertising material for the Aperture Apartments, Marrickville which referred to Henley Constructions and stated “Henley is on a strong growth trajectory with ambitions to become one of Australia’s leading private developers/builders”. That advertising material was reproduced in the report as follows:

105    Ms Lawrence also conducted searches of the “Wayback Machine” internet website (at https://web.archive) in relation to the website www.henleyconstructions.com.au. These searches produced records or “snapshots” or “screenshots” of the Henley Constructions website at 19 October 2008, 20 November 2009, 9 April 2013, 4 February 2017, 18 February 2017, 26 February 2018, 15 March 2018 and 19 April 2018. Annexure “JML-14” to the First Lawrence Affidavit also showed screenshots of the Henley Constructions website as at 27 February 2017.

106    In the Second Lawrence Affidavit, Ms Lawrence referred to receiving the first affidavit of Patrick Sarkis sworn 25 July 2019 and the affidavit of Vanessa Sarkis, being Mr Sarkis’s wife, sworn 25 July 2019. Those affidavits referred to a list of names said to have been handwritten by Mrs Sarkis in late September or early October 2006 (see annexure “VS-1” to the affidavit of Vanessa Sarkis sworn 25 July 2019). Annexure “VS-1” to the affidavit of Vanessa Sarkis sworn 25 July 2019 is a handwritten note which relevantly listed the following: “Belcorp D’s/C’s”, “Henley D’s/C’s”, “Cordell D’s/C’s”, “Meridian C’s”, “Walford C’s/D’s”, “Bel C’s”, “Denoble D’s/C’s”, and “RMS Financial Solutions P/L”.

107    After receiving the first affidavit of Patrick Sarkis sworn 25 July 2019 and the affidavit of Vanessa Sarkis sworn 25 July 2019, on or around 27 August 2019, Ms Lawrence caused searches of ASIC’s online companies and business names register to be undertaken for the names appearing on the list in annexure VS-1, other than “Henley”. The searches returned the following results for companies and business names on the list in annexure “VS-1”:

(1)    Belcorp Holdings Pty Ltd (ACN 115 727 243) registered on 11 August 2005;

(2)    Belco RP Developments Pty Ltd (ACN 131 161 807) (formerly named Sarkis Property Group Pty Ltd between 19 May 2008 and 5 September 2008) registered on 19 May 2008;

(3)    Belcorp Construction Pty Ltd (ACN 620 794 210) registered on 31 July 2017;

(4)    Australian Business Name Registration for Meridian Construction Co cancelled on 13 August 1993;

(5)    Meridian Construction (Australia) Pty Limited (ACN 103 706 618) registered on 12 February 2003;

(6)    Meridian Construction Services Pty Limited (ACN 079 377 316) registered on 17 July 1997;

(7)    Reed Elsevier Construction Information Services Pty Limited (ACN 076 286 836) (formerly named Cordell Construction Information Services Pty Limited between 6 January 1997 and 2 November 2015), registered on 27 November 1996;

(8)    Nobel Developments Pty Ltd (ACN 072 241 948) registered on 20 December1995; and

(9)    Walford Constructions Pty Ltd (ACN 000 459 183) de-registered on 6 June 1978.

108    Ms Lawrence tendered evidence of internet searches conducted on 26 July 2019 and 9 September 2019 for the names appearing on the list in annexure “VS-1”. These searches resulted in the following websites:

(1)    www.belcorp.com.au, which appears to be for a construction company called “Belcorp Services” in Sydney, which is stated on the website to have “started in 2005”;

(2)    a LinkedIn profile for “Cordell Information”, which appears to be a construction project information provider stated to have been founded in Australia in 1969. This profile links to the website at www.cordell.com.au;

(3)    www.cordell.com.au, which redirects to www.corelogic.com.au. This website refers to “Cordell Connect”, which is stated on the website to be a construction project database in Australia and New Zealand;

(4)    www.meridianconstruction.com.au, which appears to be for a construction company called “Meridian Construction Services” in Banksia, Sydney, stated to have been “established in 1997”;

(5)    a LinkedIn profile for “BEL Contracting”, which appears to be a civil contractor in the utility and road construction industry in Western Canada, stated in the LinkedIn profile to have been operating for “over 40 years”. This profile links to the website at www.belcontracting.com;

(6)    www.belcontracting.com, which appears to be the website for the abovementioned “BEL Contracting”;

(7)    www.walfordhomes.ca, which appears to be for a construction company called “Walford Homes” in Vancouver, Canada;

(8)    www.denoblehomes.com, which appears to be for a home building company called “Denoble Homes” in Canada, stated on the website to have been “founded in 1988”; and

(9)    www.rmsbuilders.ca, which appears to be for a group of construction companies in Canada called “RMS Group”, stated on the website to have been “created in 1994”.

109    Screenshots of the above websites were provided in annexure “JML-33” to the Second Lawrence Affidavit.

110    Ms Lawrence’s evidence was that, after receiving the respondents’ affidavits, she undertook further investigations into the development projects which the respondents said they had undertaken during the period early 2007 to 2021. Those projects included 20 projects concerning the construction of residential units in suburbs of Sydney. Those investigations included conducting searches of ASIC’s online company register; searches of New South Wales government websites which contained information in relation to licensed builders in that State; Google Maps searches of the addresses of the project that had been undertaken by the respondents to identify any evidence of use of the mark Henley Constructions, either with or without the device mark; and searches of real estate agents’ websites to obtain screenshots of the projects undertaken by the respondents to ascertain whether the mark Henley Constructions, either with or without the device mark, was on display at these various project sites.

111    As a consequence of undertaking these many searches, Ms Lawrence exhibited to her affidavits a vast number of screenshots of the development projects that had been undertaken by the respondents. The screenshots exhibited to Ms Lawrence’s affidavits show the use of the mark Henley Constructions, either with or without the relevant device mark, on awnings and signs on some, but not all, of Henley Constructions’ developments. By way of example, the following photographs were annexed to the Second Lawrence Affidavit in relation to these projects:

112    Ms Lawrence’s evidence was that, based on her investigations of the 21 development projects referred to in the first affidavit of Patrick Sarkis sworn 25 July 2019, in 18 of those projects, the developer was a company controlled, at least in part, by Mr Patrick Sarkis.

113    The Second Lawrence Affidavit also referred to the website www.henleygallery.com.au. Annexure “JML-59” to the Second Lawrence Affidavit contained screenshots of this website taken on 12 February 2019 and 2 September 2019. The website at 12 February 2019 stated (among other things):

Visit Henley Constructions at the new Henley Display Gallery showcasing our latest projects all under the one roof. Discuss your requirements with our talented sales team and let us find your perfect home, whether you are an owner occupier, investor or undecided, we’re here to help.

114    In the Second Lawrence Affidavit, Ms Lawrence, as a practitioner experienced in trade marks law, set out the steps Ms Lawrence takes when she is asked to provide trade mark availability advice to clients before they commence use of a new trade mark. Ms Lawrence stated that, in addition to conducting searches of the Australian Trade Marks Register, Ms Lawrence typically recommends conducting common law searches to identify any use of similar unregistered trade marks in Australia that may pose a risk to the client’s use of the proposed mark. Ms Lawrence stated that, to identify any such common law trade marks, Ms Lawrence would typically conduct as a bare minimum the following searches in addition to ASIC business and company name searches:

(1)    internet searches (that is, Google searches) for both the whole of the proposed mark and each distinctive element (eg, in this case, each of “Henley Constructions” and “Henley”);

(2)    searches of any websites arising from internet URLs compromising the proposed mark, or distinctive elements of the mark, and “.com” or “.com.au” (eg, by typing “www.henleyconstructions.com.au” and “www.henley.com.au” directly into the address bar of an internet browser);

(3)    domain name searches of the “Whois database” for “.com.au” domain names, for the whole of the proposed mark, and each of the distinctive elements of the mark (eg “Henley.com.au” and “henleyconstructions.com.au”); and

(4)    searches of the Yellow Pages and White Pages directories for any listings of businesses with names which contain the proposed mark or the essential elements of the proposed mark.

115    I accept Ms Lawrence’s evidence that, even as far back as December 2006, the prudent course to adopt in ascertaining the availability of a trade mark included these searches.

116    I accept Ms Lawrence’s evidence that the above searches are the typical searches which she would have conducted in December 2006 to ascertain whether the trade mark Henley Constructions or Henley was available. In this regard, I expressly reject the proposition put to Ms Lawrence in cross-examination that a less sophisticated business or a small business seeking to ascertain the availability of a trade mark would not at least undertake a Google search or another relevant search of websites. I accept Ms Lawrence’s evidence that, in December 2006, clients, both large and sophisticated or small, typically undertook at least internet searches, including that often clients had already undertaken their own such searches before engaging Ms Lawrence. In this respect, counsel for the respondents had the following exchange with Ms Lawrence:

Well, do you accept that, at least 10 or so years ago, in your experience, there could be a deal of confusion on the part of small businesses between the role of company names, business names and trademarks?---10 years ago?

Yes?---Look, I – I think, … with the internet becoming a lot more user friendly and people using it more, I think, over the last 10, 15 years, I think, … I’ve noticed that my clients have become more sophisticated in using it.

…

And would you accept that whilst that might be what you, as a member of a top-tier law firm, would search for on behalf of clients, something less than those inquiries may well be undertaken by, for example, small business operators who don’t enjoy the services of trademark lawyers like you?---I think – I think it varies considerably, and sometimes that has not got to do with the size of the business. I think that many people and many businesses are a lot savvier these days. You know, but … even back in the early 2000s, I had clients who performed at least Google searches before coming to me. And certainly now, I have many clients who do their own searching and – and just come to me when they – when they think they’ve identified a problem.

(Emphasis added.)

117    In the Third Lawrence Affidavit, Ms Lawrence set out matters relevant to the prosecution of the “HENLEY” trade mark application. Ms Lawrence said that, at the time that Henley Arch filed and prosecuted Australian trade mark application number 1152820 for the trade mark “HENLEY” (HENLEY trade mark application), Henley Arch was represented by the law firm Blake Dawson Waldron and, in particular, by the intellectual property team of Blake Dawson Waldron. Ms Lawrence deposed that, on 1 May 2007, a lawyer then employed in the intellectual property team at Blake Dawson Waldron, Ms Vicki Huang, had two telephone conversations with a trade mark examiner at the Australian Trade Marks Office, Mr Peter Jarvis. Mr Jarvis was the trade mark examiner who examined the “HENLEY” trade mark application and issued an examination report on 28 March 2007 in relation to that application. The examination report is produced as annexure “LNS-7” to the affidavit of Mr Lance Newman Scott affirmed 9 May 2019 in this proceeding.

Cross-examination of Ms Lawrence

118    In cross-examination, Ms Lawrence was referred to the following photograph (which was annexed to the TMIS report dated 11 August 2017 (referred to above)):

119    Ms Lawrence was asked what the purpose was of putting this photograph into evidence. Ms Lawrence said that Henley Arch put into evidence everything that showed a reference to the place of business for Henley Constructions and also how that name was being used. Ms Lawrence said she did not give specific thought as to whether the purpose of putting this photograph into evidence was to show trade mark use. However, Ms Lawrence said that this page of the TMIS report was put into evidence “to address trade mark use”.

120    Ms Lawrence was then taken to the following photograph which was attached to the TMIS report:

121    This is a photo of the door of Henley Constructions’ business premises. Ms Lawrence noted that this door used the Henley Constructions logo and used the telephone number “1300 Henley”. Ms Lawrence was asked what she noticed about that telephone number and Ms Lawrence said that it “had the word “Henley” in it”, and that looked to Ms Lawrence like trade mark use. As to the website on this door, www.henleyconstructions.com.au, Ms Lawrence said that a website address can function as a trade mark. Ms Lawrence said that she considered these features on this door were evidence of trade mark use.

122    Ms Lawrence was also taken to a brochure where Henley Constructions referred to itself as “Henley”. Ms Lawrence said that there were a number of examples of the use of this name which appeared to her to constitute trade mark usage. Ms Lawrence was also referred to Mr Sarkis’s business card, which contained contact details such as “1300 Henley” and the email address “@henleyconstructions.com.au”. Ms Lawrence said that these matters were also potentially trade mark use. Ms Lawrence said that, in the context of these details being on a business card, those contact details appeared to be “projecting the brand” of Henley Constructions. However, Ms Lawrence conceded that she was “less certain” as to whether the email address constituted trade mark usage. In contrast, Ms Lawrence considered the use of the word “Henley” in the “1300 Henley” telephone number to be “quite prominent”.

123    Ms Lawrence was taken to a number of snapshots, of the Henley Constructions website at various dates, which were annexed to the First Lawrence Affidavit. Ms Lawrence, in particular, was taken to a snapshot of the Henley Constructions website as at 4 February 2017. Ms Lawrence said that the purpose of putting this snapshot of the website into evidence was to demonstrate that there had been a “change or a ramping up of the website” in about 2017. By “ramping up”, Ms Lawrence said that she meant the use of the Henley Constructions website was becoming more extensive. That is, there was more content shown on the website. As to the trade mark usage on these websites, Ms Lawrence said that the use of the Henley Constructions mark on the website and the website address (www.henleyconstructions.com.au) were examples of trade mark usage. Ms Lawrence also said that the use of the word “Henley” in narrative or descriptive parts of the website (such as “Henley prides itself on delivering projects both on schedule and within budget”) were also examples of trade mark usage.

124    Ms Lawrence was also taken to the following photograph, which appeared on the Henley Constructions website as at 18 February 2017:

125    Ms Lawrence noted that this use of the word “Henley” on the frontage the building pictured above appeared to be trade mark use. It was put to Ms Lawrence that the name of the building is in fact “Henley”. Ms Lawrence said that, at the time this photograph was included in her affidavit evidence, she was not aware that the relevant building was in fact called “Henley”. Ms Lawrence accepted that, in those circumstances, the use of the word “Henley” on this building was not trade mark usage.

126    Ms Lawrence was then referred to the various Google Maps photographs annexed to the Second Lawrence Affidavit. Those photographs showed Henley Constructions’ various projects approximately before and after the commencement and completion of the relevant project. Ms Lawrence confirmed that a purpose of conducting these Google Maps searches was to identify whether or not Henley Constructions had used any relevant branding on the relevant construction sites during the development of those projects.

127    Ms Lawrence was, in particular, taken to annexure “JML-38” to the Second Lawrence Affidavit, being a Google Maps screenshot of the “Church Street project” by Henley Constructions in November 2007. That screenshot did not appear to contain any obvious Henley Constructions signage. However, a Google Maps photograph identified by Henley Constructions’ solicitors, being Exhibit R1, was put to Ms Lawrence and, in Exhibit R1, it can be seen that, as at November 2007, the Church Street project had a small sign erected which stated “Henley Constructions”. Ms Lawrence said she did not know why the image depicted in Exhibit R1 was not annexed to her affidavit.

128    Ms Lawrence was also taken to various photographs that were taken by Mr Sarkis or other employees of Henley Constructions, and which were tendered as Exhibit R22. Those photographs depicted the various projects that were also depicted in the Google Maps photographs annexed to Ms Lawrence’s affidavit. It can be seen from the photographs in Exhibit R22 that Henley Constructions signage was affixed to the fencing or hoarding which was erected around those developments.

129    Ms Lawrence was taken to annexure “JML-47” to the Second Lawrence Affidavit, which were Google Maps photographs of 203 Birdwood Road, Georges Hall, New South Wales. There was limited Henley Constructions signage visible in these photographs. However, tendered as Exhibit R2 was a Google Maps photograph of 201 Birdwood Road, Georges Hall, New South Wales and, in Exhibit R2, it can be seen that the relevant building depicted has Henley Constructions signage affixed to it. The same position also arises when one compares the Google Maps photographs annexed as “JML-48” to the Second Lawrence Affidavit and the Google Maps screenshot tendered as Exhibit R3. That is, the photographs of the development at 59-65 Chester Avenue, Maroubra, New South Wales shown in annexure “JML-48” do not depict Henley Constructions signage, whereas signage depicting the Henley Constructions device mark is visible in the Google Maps photograph tendered as Exhibit R3. That position also arises in relation to the Google Maps photographs annexed as “JML-47” and the Google Maps photographs tendered as Exhibit R4, which concern 9 Wrights Road Drummoyne, New South Wales. It should however be noted that the Google Maps photograph depicted in Exhibit R4, which was put to Ms Lawrence in cross-examination, is a Google Maps photograph taken in November 2019, and is dated after Ms Lawrence affirmed the Second Lawrence Affidavit on 31 October 2019.

130    Ms Lawrence was then cross-examined concerning aspects of the Second Lawrence Affidavit. In the Second Lawrence Affidavit, by reference to Ms Lawrence’s own experience as a trade mark lawyer in Australia, Ms Lawrence set out her views as to the appropriate searches that should be undertaken to assess trade mark availability. Ms Lawrence did not accept that many new businesses turn to their accountants as trusted advisors to deal with all compliance and naming issues in relation to the creation of new businesses. In this respect, Ms Lawrence was taken to Exhibit R5, being a page from IP Australia’s website titled “The importance of IP for Accountants and their clients” dated 27 February 2018. Ms Lawrence said that she had experience advising clients that might be described as small business operators. Ms Lawrence said this experience was more common approximately 10 years ago or in the early 2000s. Ms Lawrence said she did not recall at that time whether or not there was a degree of confusion on the part of small clients as to the role of company names, business names and trade marks.

131    As stated above, with respect to the searches which Ms Lawrence typically recommended when providing trade mark availability advice, Ms Lawrence said that a search of the trade mark register would be the “first point of call”. In the Second Lawrence Affidavit, Ms Lawrence set out the “bare minimum” searches Ms Lawrence would conduct to identify “common law” trade marks. It was put to Ms Lawrence that these searches in fact represented the “gold standard” of searching that Ms Lawrence recommends to clients. Ms Lawrence said that those are the searches that would be recommended as a bare minimum. Ms Lawrence said that, even in the early 2000s, Ms Lawrence had clients that performed at least Google searches before seeking advice from Ms Lawrence. As stated above, I accept Ms Lawrence’s evidence that the searches referred to in Ms Lawrence’s affidavit are the typical searches which she would have conducted in December 2006 to ascertain whether the trade mark Henley Constructions or Henley was available. I expressly reject the proposition put to Ms Lawrence in cross-examination that a less sophisticated business or a small business seeking to ascertain the availability of a trade mark would not undertake, at least, a Google search or another relevant search of websites

Iain Brian Whyley

132    Mr Whyley is the National Sales Manager for Caesarstone Australia Pty Ltd (Caesarstone). Mr Whyley has worked for Caesarstone for the past seven and a half years and has held his current role since November 2018. Mr Whyley’s affidavit affirmed 5 June 2020 was filed by Henley Arch.

133    Mr Whyley gave honest evidence which was relevant to whether the use of the mark by Henley Constructions was misleading or deceptive in that members of the public would be misled into believing that Henley Constructions was in some way connected with Henley Arch.

134    Mr Whyley has worked in the building supply industry, specifically in relation to the supply of decorative surfaces, for the past 35 years. Over this time, Mr Whyley has worked in the building supply industry in both Sydney and Melbourne and is familiar with the industry in both those cities, as well as the industry nationally. Mr Whyley’s experience includes working for a plastics business called EGR (a division of Oakmoore Pty Ltd) between 2007 and 2010. In this role, Mr Whyley was the was the General Manager of Sales and Marketing, which involved establishing and supplying to distributors who in turn supplied commercial customers, hardware stores, and building and construction distribution companies. After leaving EGR in 2010, Mr Whyley was general manager at a business called Smartstone, part of the Halifax Vogel Group Pty Ltd, for about three years. Smartstone is a distributor of engineered quartz surfaces used for residential and commercial interior applications. In 2013, Mr Whyley left Smartstone and commenced working at Caesarstone. At first, Mr Whyley was the New South Wales manager based in Sydney, and then, in April 2017, he was transferred to Melbourne where he commenced the position of Regional Manager for Victoria, South Australia and Western Australia. Mr Whyley was then promoted to National Sales Manager in November 2018. In his current role of National Sales Manager, Mr Whyley is responsible for Caesarstone’s sales and marketing activities throughout Australia. Caesarstone sells “slabs” that are used for bench tops in kitchens and bathrooms, as well as for other uses such as kitchen “splashbacks”. Commercial builders, such as Mirvac, Meriton and Hutchinson, who construct large commercial apartment projects, are high-volume customers of Caesarstone slabs.

135    Mr Whyley deposed that, in his experience, a customer who is building luxury apartments and a customer who is building a luxury detached home will make a similar selection from Caesarstone’s range. However, Mr Whyley deposed that the fundamental product remains identical, with there being merely a difference as to aesthetics. Mr Whyley deposed that, similarly, the skills required to install Caesarstone’s products are identical no matter what the application. If a tradesperson can install a Caesarstone product in a small house, they can install it in a mansion, or a large high-density residential or commercial construction.

136    Mr Whyley deposed that Caesarstone has had a long-term relationship with Henley Arch, who Mr Whyley knows as “Henley”. Mr Whyley had also heard of Henley Arch prior to joining Caesarstone through his previous position at Smartstone.

137    Mr Whyley’s evidence was that prior to being contacted to give evidence in this proceeding, he had never heard of the business called Henley Constructions.

138    In May 2020, Mr Whyley spoke with Mr Simon Gough of Henley Arch, who mentioned that Henley Arch was involved in a legal dispute with a company called Henley Constructions. While Mr Whyley was speaking to Mr Gough, Mr Whyley entered the search term “Henley” into Caesarstone’s Customer Relations Management system (CRM). Mr Whyley deposed that the CRM has records for several Henley entities such as Henley Properties, Henley Homes, Edgewater, and also Henley Constructions. These records have been entered by Caesarstone employees when dealing with these entities at the time of first contact. Mr Whyley deposed that the entry in the CRM for Henley Constructions was created on 20 February 2018, but there is no record of any sales made by Caesarstone to Henley Constructions. From a further review of the CRM, the entry for Henley Constructions in fact involved a service call to what is actually a Henley Homes build and that the person requesting the service call was a Henley Arch staff member, not a Henley Constructions staff member.

139    As to Mr Whyley’s evidence about the information maintained on CRM which records references in the CRM system to Henley Properties, Henley Homes, Edgewater (as a Henley Arch subsidiary), that is not surprising as Henley Arch has been a long-standing client of Caesarstone from about 2003 or 2004.

140    Mr Whyley was cross examined by Henley Constructions’ counsel, Mr Hennessy. Mr Whyley, in cross-examination, accepted that there were many types of customers who engaged stonemasons to fabricate benchtops, splashbacks and other finished products for kitchens and bathrooms. Those customers include builders, kitchen companies and individual house owners. Mr Whyley accepted that the suitability of a Caesarstone product differed depending on the application, and that the manufacturers’ recommendations for fabrication and installation should be followed to avoid product failure. Mr Whyley accepted that he had no qualifications as a stonemason, architect or designer or as a builder, and no expertise in building code compliance. His experience was working in the stone industry for a period of 11 years. Mr Whyley confirmed that, at the time of giving evidence, Henley Arch was a customer of Caesarstone.

Christopher Butler

141    Mr Butler is the Office Manager at an organisation titled the “Internet Archive” which is located in San Francisco, California, in the United States of America.

142    Mr Butler deposed that the Internet Archive is a website that provides access to a digital library of Internet sites and other cultural artefacts in digital form. Like a paper library, it provides free access to researchers, historians, scholars, and the general public.

143    Mr Butler gave evidence that the Internet Archive has created a service known as the “Wayback Machine”. The Wayback Machine makes it possible to browse more than 450 billion pages stored in the Internet Archive’s web archive. Visitors to the Wayback Machine can search archives by using a website address. If archived records for a website address are available, the visitor will be presented with a display of available dates. The visitor may select one of those dates, and begin browsing an archived snapshot of the internet.

144    Mr Butler deposed that the archived data made viewable and browseable by the Wayback Machine is obtained by use of web archiving software that automatically stores copies of files available via the internet, and each file is preserved as it existed at a particular point in time.

145    Mr Butler attached to his affidavit the Internet Archive’s records of various websites relevant to this proceeding.

146    Mr Butler was cross-examined by counsel for Henley Constructions, Mr Sykes. During cross-examination, Mr Butler accepted that it was possible that a historic webpage which is accessible via the Wayback Machine may not have, in fact, been viewed by any user in Australia at a particular point in time in the past. Mr Butler accepted that a historic webpage archived in the Wayback Machine may not have appeared in a list of Google search results at a particular point in time in the past. Mr Butler accepted that he had no knowledge of whether any persons located in Australia accessed the pages annexed to Mr Butler’s affidavit at any point in time in the past. Mr Butler accepted that he had no knowledge of how many times any of those pages were visited, no knowledge of the locations of persons who may have accessed those pages, and no knowledge of whether or not those pages were in the past retrievable by searches using a relevant search engine (such as Google).

147    I accept Mr Butler as a truthful witness. The essential point of Mr Butler’s evidence was that, by using the Wayback Machine, it was possible for Henley Arch and Henley Constructions to view websites as they appeared on the internet at a particular point in time in the past. That evidence essentially supported the parties’ use of material retrieved using the Wayback Machine and referred to in other affidavits in this proceeding. However, it was not possible for Mr Butler to comment on how many users visited a particular page, where visitors of a page may have been located, or whether a particular page appeared in search engine search results at a particular point in time in the past.

Damien Boyer

148    In this proceeding, Mr Damien Boyer affirmed an affidavit dated 8 May 2019 and a second affidavit affirmed 5 June 2020.

149    At the time of making his first affidavit, Mr Boyer was the Head of Commercial Sales in Australia at Karndean International Pty Ltd (Karndean), and had held this role since May 2017. At the time of making his second affidavit, affirmed 5 June 2020, Mr Boyer had left the employ of Karndean. Prior to Karndean, from July 2006 to May 2017, Mr Boyer was the Commercial Manager in the Melbourne office of James Hardie Australia Pty Ltd (James Hardie). From July 1998 to July 2006, Mr Boyer was Manager of the Asian Sales Division at a provider of timber exports and forest management services in Australia and New Zealand, namely Pentarch Forest Groups (now the Pentarch Group) in Melbourne. Mr Boyer made his affidavit solely in his personal capacity, and not as a representative of Karndean.

150    Mr Boyer’s affidavit primarily related to his experience while working at James Hardie. The James Hardie group is an international building product manufacturer, particularly of fibre-reinforced cement cladding, internal lining and flooring products and accessories.

151    As Commercial Manager in James Hardie’s Melbourne office, Mr Boyer was responsible for managing James Hardie’s operations in Victoria and Tasmania. As a result of his professional experience, Mr Boyer has a working knowledge of the Australian housing construction market. This includes knowledge of major suppliers, manufacturers, distributors and retailers of building supplies and materials, and also providers of building and construction services, with this being a key market for James Hardie (including while Mr Boyer worked there).

152    When Mr Boyer worked at James Hardie, Henley Arch was a customer that primarily purchased cladding from James Hardie. Henley Arch was James Hardie’s customer from around May 2011 to at least May 2017 (when Mr Boyer left James Hardie). Mr Boyer personally managed the relationship between James Hardie and Henley Arch during this period, and Mr Boyer’s main contact at Henley Arch was Henley Arch’s procurement manager, Mr Simon Gough.

153    Mr Boyer deposed that, in or around February 2017, Mr Boyer came across an article on the internet published by “Architecture and Design” titled “Experienced NSW builder keen to repeat AFS LOGICWALL success” and dated 20 February 2017. The article was annexed to Mr Boyer’s affidavit affirmed 8 May 2019. It stated:

An experienced builder in NSW has decided to specify LOGICWALL from AFS Systems Pty Ltd (CSR) … in future projects following the success of their first project with the proven walling system.

Patrick Sarkis, Project Manager at Henley Constructions was pleasantly surprised with the outcomes of using AFS LOGICWALL at their Parramatta Rd, Camperdown project. AFS’ shop-drawn accuracy and commitment to delivery times ensured the timely construction of the Camperdown project.

Patrick observed that the LOGICWALL experience began well before the arrival of the walling system, with the AFS team working closely with Henley Constructions throughout the execution of the project. Based on this success, Patrick is keen to specify AFS walling for future projects in a busy pipeline of multi-residential ventures.

According to Patrick, AFS has created an unbreakable bond with Henley Constructions and has also provided the building industry with a more efficient way of constructing walls. He adds that the teamwork and professionalism demonstrated by AFS during the construction of ‘Camperdown 2050’ has set a standard that will be hard to match.

154    Mr Boyer deposed that he does not recall being aware of Henley Constructions prior to reading this article. Mr Boyer deposed that, when he read this article, he recalls thinking that Henley Constructions might be an “offshoot” of Henley Arch because Henley Constructions had the word “Henley” in Henley Constructions’ name. Mr Boyer deposed that he recalls thinking that it was odd that Henley Arch had not mentioned this building project to him, and that Henley Arch had used AFS for the project instead of James Hardie, as Mr Boyer had previously discussed with Henley Arch the prospect of James Hardie supplying materials to Henley Arch for potential townhouse developments in New South Wales.

155    After reading this article, Mr Boyer sent an email to representatives of Henley Arch, Mr Simon Gough and Mr Frank Serratore. (This is the same email referred to above in relation to Mr Harvey’s evidence.) The subject line of that email was “Guys, does the below business based in Sydney have anything at all to do with you?”. In the body of the email, Mr Boyer reproduced a hyperlink to the article referred to above. Mr Boyer then stated that this article “[m]ight be [referring to] just another business in Sydney that goes by the name of Henley?”

156    Mr Boyer deposed in his second affidavit that he has no financial or commercial interest in Henley Arch.

157    In his second affidavit, Mr Boyer also set out matters relating to his employment at Karndean. Mr Boyer deposed that Karndean supplies products to Henley Arch, and Henley Arch is a client that Mr Boyer brought to Karndean in 2017 as a result of the relationship Mr Boyer had with Henley Arch at James Hardie.

158    Mr Boyer was asked to express an opinion on the difference between the products supplied by Karndean to builders of detached housing and builders of apartments. Mr Boyer deposed that the products are identical. Mr Boyer deposed that there is no difference in the skills and techniques required to install any of the Karndean products to different types of residential constructions. Mr Boyer deposed that, if a person can install Karndean flooring to a house, they can install it in an apartment.

159    Mr Boyer was also asked to comment on whether it is common or uncommon for builders to work on both apartments and detached and semi-detached house projects. Mr Boyer deposed that, from his knowledge of, and experience in, the building and construction industry, it is relatively common for builders and building companies to work on both types of projects. Mr Boyer also deposed that, from his experience in the industry, and referring to the products with which he is familiar, in Mr Boyer’s opinion, there is very little difference in the construction of a single storey house, a two-storey house, or an apartment building up to 12 levels high. Mr Boyer deposed that apartments may have different acoustic and external fire considerations, but the fundamentals are the same.

160    Mr Boyer was an honest witness who gave evidence on the basis of his experience in working in the sale and supply of building materials to the residential and commercial building industry. Mr Boyer was put forward by Henley Arch as an independent expert.

161    However, I do not accept that he was an independent expert. First, an “expert report must … comply with the” practice note dealing with guidelines for expert witnesses in proceedings in the Court: Federal Court Rules 2011 (Cth), r 23.13(1)(h) (emphasis added). The relevant practice note states (among other things):

(1)    “[t]he purpose of the use of expert evidence in proceedings, often in relation to complex subject matter, is for the Court to receive the benefit of the objective and impartial assessment of an issue from a witness with specialised knowledge” (emphasis added);

(2)    “[t]he role of the expert witness is to provide relevant and impartial evidence in his or her area of expertise” (emphasis added);

(3)    “[t]he contents of an expert's report must conform with the requirements set out in the [Harmonised Expert Witness Code of Conduct]”. The Harmonised Expert Witness Code of Conduct provides that “[a]n expert witness is not an advocate for a party and has a paramount duty, overriding any duty to the party to the proceedings or other person retaining the expert witness, to assist the Court impartially on matters relevant to the area of expertise of the witness”.

162    Second, having regard to those requirements, whilst I accept that Mr Boyer had no financial or commercial interest in Henley Arch and any related company, he had, during his employment from July 2006 to May 2017, substantial dealings with Henley Arch. James Hardie was a long-standing supplier of building materials to Henley Arch, and Henley Arch had a “preferred supplier” status with James Hardie. Third, when Mr Boyer moved employers from James Hardie to Karndean, Mr Boyer also took Henley Arch with him to Karndean as a customer. This past relationship which existed between Mr Boyer, whilst an employee with James Hardie and Karndean, results in Mr Boyer’s evidence not being objective or impartial and not having the status of an independent expert. Insofar as he purports to give expert opinion evidence, it is inadmissible opinion evidence or has no probative value. In any event, even if the evidence is not excluded, for the reasons given, I give Mr Boyer’s opinion evidence minimal weight.

163    Mr Boyer did give some admissible evidence of fact relevant to the proceeding. Mr Boyer said that, in February 2017, he read an article in a trade publication for professional building and design providers. That article referred to Henley Constructions. Mr Boyer said that he remembers thinking that Henley Constructions might be an offshoot of Henley Arch in New South Wales or something to do with Henley Arch. This email is set out above.

164    It will be recalled that, in that email, Mr Boyer stated that the article “[m]ight be [referring to] just another business in Sydney that goes by the name of Henley …”. In cross-examination, Mr Boyer accepted that this statement reflected an assumption he was making, namely that Henley Constructions might be “just another business in Sydney that goes by the name Henley”.

Patrick Prentice

165    Mr Prentice might be described as a joint witness.

166    Mr Prentice’s first affidavit affirmed 9 May 2019 was filed by Henley Constructions. Mr Prentice’s second affidavit affirmed 5 June 2020 was, however, filed by Henley Arch.

Mr Prentice’s first affidavit

167    In his first affidavit, filed by Henley Constructions, Mr Prentice deposed that he held a current license to practice as a builder in Western Australia up until the end of 2022 and Mr Prentice held this license since 26 June 2003. Prior to retiring from full time work in about December 2016, Mr Prentice was a director of Trojan Construction Pty Ltd, which provided general building services specialising in building new residential homes as well as residential additions and alterations. Mr Prentice operated his building business from an address in the suburb of Henley Brook, Western Australia, at least since about June 2003.

168    However, Mr Prentice at no stage gave evidence that he considered using, or had sought to use, the name “Henley” for a building business he operated in Henley Brook. Mr Prentice’s evidence is that he is an experienced builder that resides in the suburb of Henley Brook in Western Australia.

Mr Prentice’s second affidavit

169    In his second affidavit, filed by Henley Arch, Mr Prentice deposed that his first affidavit was taken by the solicitors acting for Henley Constructions. However, after affirming his first affidavit, Mr Prentice was approached by the solicitors acting for Henley Arch. Mr Prentice made his second affidavit in respect of his knowledge of, and experience in, the building industry. Mr Prentice deposed that he had no financial or commercial interest in Henley Arch or any other related company. Mr Prentice is not aware of any conflict of interest or any other reason preventing him from acting as an independent expert witness in this proceeding.

170    Mr Prentice deposed that he has worked in the building industry for most of his life. Mr Prentice deposed that, during his building career in New Zealand and Western Australia, Mr Prentice has been involved in the construction of, or been responsible for, building hundreds of houses and hundreds of units.

171    Mr Prentice was asked to express his expert opinion on how construction techniques and materials used in the construction of houses compared to those used for the building of units and high rise buildings. When referring to “units”, Mr Prentice was referring to blocks of apartments up to three storeys. When referring to “high-rise units”, Mr Prentice was referring to blocks of apartments greater than three storeys high. When referring to “individual units”, Mr Prentice was referring to residences of usually one to three bedrooms, with a kitchen, lounge and bathroom (sometimes more than one), sometimes having a balcony and typically constructed with more than one individual unit per level, opening into a shared foyer or other hallway space, with the floors connected by a common stairwell or lift system.

172    Mr Prentice’s opinion was that there is not a great deal of difference between all these types of constructions. Mr Prentice deposed that the construction of houses, units and high rise buildings involve similar steps. Mr Prentice’s evidence was that whilst units and high rise buildings are often on a much larger scale, the materials and construction techniques are much the same.

173    In cross-examination, Mr Prentice accepted that his Western Australia building licence did not entitle him to practice as a builder in other Australian States. That cross-examination was presumably directed to advancing the proposition that the market for building services is a State-based market, rather than a national market. However, there is no evidence that Mr Prentice has any particular expertise as to building licensing regimes.

174    Mr Prentice also accepted in cross-examination that his experience was limited to constructing buildings of not more than three storeys. Mr Prentice accepted in cross-examination that he was not meaning to express an opinion as to the construction of units over three storeys in height, save that the construction of units over three storeys would involve the use of similar trades.

175    I found Mr Prentice to be a forthright and honest witness. However, I have found none of his evidence to be probative of any of the matters relevant to this proceeding. The only matter of even a remote connection with this proceeding, was the fact that he conducted his building business from an address in Henley Brook, Western Australia.

176    I make further findings on the evidence tendered by Henley Arch later in these Reasons. I turn to set out the evidence of Henley Constructions and Mr Sarkis.

EVIDENCE OF HENLEY CONSTRUCTIONS

177    Henley Constructions, in addition to relying on other evidence in the Tender Bundle, tendered affidavit evidence from:

(1)    Steven Bruce Henley affirmed 7 May 2019;

(2)    Patrick Prentice affirmed 9 May 2019 (referred to above);

(3)    Lance Newman Scott affirmed 9 May 2019;

(4)    Jasmine Bianca Waddell affirmed 9 May 2019 and 25 July 2019;

(5)    Patrick Sarkis sworn 25 July 2019, 13 September 2019 and 24 April 2020;

(6)    Vanessa Sarkis sworn 25 July 2019;

(7)    David Charles Thomas sworn 30 August 2019;

(8)    Kerry Jaye Penney affirmed 2 September 2019;

(9)    Manuel Albert Becerra affirmed 23 April 2020; and

(10)    Mardiros Tatian affirmed 24 April 2020.

178    Henley Constructions also relied on certain summaries, being summaries of annexures to the affidavits of Jasmine Bianca Waddell, namely:

(1)    a summary of annexure “JW-4a” (Exhibit R26), which relates to surnames containing “Henley”, “Hnly” or hyphenated versions of those names;

(2)    a summary of annexures “JW-40”, “JW-41”, “JW-72” and “JW-73” (Exhibit R27), which relates to building licences in South Australia containing reference to “Henley” or “Hnly”;

(3)    a summary of annexures “JW-31” and “JW-32” (Exhibit R28), which relates to building licences in Western Australia containing reference to “Henley” or “Hnly”.

179    Henley Constructions’ witnesses gave the following evidence.

Steven Bruce Henley

180    An affidavit affirmed 7 May 2019 by Mr Steven Bruce Henley was tendered by Henley Constructions. Mr Henley holds a current license to practice as a builder in Queensland and has held this license since 28 June 2005. Mr Henley has worked as a builder for over 30 years and during this time has worked in his own building business and has worked as an employee in other building businesses.

181    The relevance of Mr Henley’s evidence was that he was a builder in Australia with the last name “Henley”. That is relevant to certain of Henley Constructions’ submissions in this proceeding, which are addressed later in these Reasons. However, like Mr Prentice, Mr Henley did not give any evidence that he had considered using, or sought to use, his surname as a name for a building business.

Patrick Sarkis

182    Mr Sarkis has sworn three affidavits in this proceeding, being an affidavit sworn 25 July 2019 (First Patrick Sarkis Affidavit), an affidavit sworn 13 September 2019 (Second Patrick Sarkis Affidavit), and an affidavit sworn 24 April 2020 (Third Patrick Sarkis Affidavit).

183    During the period 2003 to 2006, Mr Sarkis attended and successfully completed a TAFE builder’s course (Certificate 4 and Diploma of Building Studies). Mr Sarkis has been a licensed builder in New South Wales since 26 May 2008. Henley Constructions became a licensed builder in New South Wales on 28 May 2008.

184    Mr Sarkis is a director of the first respondent, Henley Constructions. Mr Sarkis is the second respondent in this proceeding. Mr Sarkis has worked in the building and construction industry since 2002. In 2006, Mr Sarkis commenced his own construction company with the aim of becoming Australia’s biggest builder and developer. Mr Sarkis discussed his ambitions with his now wife, Mrs Vanessa Sarkis, in or around June or July 2006. Mrs Sarkis offered to come up with some company names for the soon-to-be-established company.

185    During the period in or around August, September and October 2006, Mr Sarkis had ceased working and was focusing on plans to establish his new construction or development company. During this time, Mr Sarkis, whilst at home, observed Mrs Sarkis write a list of company names for the new company. One of the names on the list was recorded by Mrs Sarkis as “Henley Cs/Ds”. This was a reference to Henley Constructions or, alternatively, Henley Developments.

186    Mr Sarkis’s evidence was that he did not undertake any research of who his competition was likely to be in the building industry. Mr Sarkis sent to various recipients a text message regarding potential company names. Mr Sarkis’s evidence was that he sent this text message to:

(1)    his accountant at the time, Joseph Mubarak;

(2)    his solicitor at the time, Theo Tsavdaridis;

(3)    a friend, Frank Scarf;

(4)    his bank manager whose name he could not recall;

(5)    his sister-in-law, Diane Assaf;

(6)    his brother-in-law, Kabi Slan; and

(7)    a friend and business associate at the time, William Gregory.

187    In the text message, Mr Sarkis sought those persons’ opinion as to which name on the list that Mrs Sarkis had created should be chosen as the name of the new building company. Mr Sarkis’s evidence was that the “Henley” name was extremely popular amongst those people to whom he had sent a text message.

188    Mr Sarkis, in the First Patrick Sarkis Affidavit, deposed to an account of a discussion that he had with Mr Mubarak in which Mr Sarkis asked Mr Mubarak to do a company search on each name to see if they were available. Mr Sarkis said that Mrs Sarkis had undertaken ASIC searches of her own but that he would like someone to double check. Mr Mubarak replied in words to the following effect: “No problem brother Patrick”.

189    Mr Sarkis, in the First Patrick Sarkis Affidavit, then deposed to a subsequent telephone conversation which he had with Mr Tsavdaridis. Mr Tsavdaridis said words to the effect that he would recommend the name Henley Constructions, and Mr Sarkis, in effect, said he was thinking of using Henley as well. Mr Sarkis’s evidence was that Mr Tsavdaridis told Mr Sarkis to contact Mr Mubarak to see if that name was available.

190    Mr Sarkis’s evidence was that, in the days following, he spoke to about 30 people in total about their preference in respect of the names appearing on Mrs Sarkis’s list. These people included family, relatives, friends and contractors with whom Mr Sarkis worked on site. Mr Sarkis’s evidence was that “Henley” was the most favoured name.

191    Mr Sarkis said that, after these discussions, he prepared a short list of three company names, being:

(1)    Henley Constructions;

(2)    Cordell Constructions; and

(3)    Belcorp Developments.

192    Mr Sarkis said that, after further reflection, and considering the views of the people he had spoken to, he decided to select Henley Constructions as the name for his new company. Mr Sarkis did not undertake:

(1)    general internet or Google searches for the words “Henley Constructions” and “Henley”, or for websites such as www.henley.com.au;

(2)    any form of domain name search; or

(3)    any search of the Yellow Pages and White Pages directories for any listings of businesses with names such as Henley, Henley Constructions or Henley Developments.

193    Mr Sarkis also did not himself undertake ASIC or business name searches.

194    Mr Sarkis said that he telephoned Mr Mubarak and asked him to register Henley Constructions straightaway. Mr Sarkis said that he vaguely recalled a subsequent conversation with Mr Mubarak in which Mr Mubarak informed Mr Sarkis that the name “Henley Constructions” was available on the ASIC register. Mr Sarkis recalled that, in effect, he asked Mr Mubarak to register the name as soon as possible in case someone else took it.

195    The first project undertaken by Henley Constructions was 24 residential units at a property development at 119-135 Church Street, Camperdown, New South Wales, which commenced in or around January or February 2007 and was completed in or around April 2008.

196    In the years that have followed, Mr Sarkis said that Henley Constructions has focused mostly on the construction of residential unit blocks in and around suburban Sydney in addition to some commercial units and private home construction and renovations.

197    As at the date of the First Patrick Sarkis Affidavit, Henley Constructions had undertaken various developments including the following:

198    Mr Sarkis said that some of these projects, such as the “Aperture”, “Birdwood”, “Liberty” and “Quartier” projects, were promoted by way of websites under the “Henley Constructions” brand. Annexure “PS-7” to the First Patrick Sarkis Affidavit provided copies of these websites.

199    By way of example, in relation to the “Aperture” project, part of the website contained the Henley Constructions logo and stated:

Henley Constructions is a privately owned construction company specialising in delivering high- quality residential projects. Over the past 10 years Henley has built an outstanding reputation for their exceptional attention to detail and elite calibre of construction. The team prides itself on professionalism, employing only the best staff to ensure streamlined delivery and quality workmanship.

(Emphasis added.)

200    In relation to the “Birdwood” project, the relevant website contained a similar statement to the statement contained on the website for the “Aperture Project”. However, the website for the “Birdwood” project also stated: “[f]ounded in 2006 Henley has completed over 10 projects and is fast becoming one of Australia's leading private builders …”.

201    In relation to the “Liberty” project, the relevant website stated:

Henley Constructions is a privately owned construction company delivering quality boutique residential projects across Sydney. With more than a decade of experience, the team has built an outstanding reputation in the market for quality and attention to detail on every project. Completing 10 projects in 10 years, Henley Constructions is fast becoming one of Australia's leading private builders.

(Emphasis added.)

202    In relation to the “Quartier” project, the relevant website stated:

Henley Constructions is a privately owned company specialising in delivering high-quality residential projects. Over the past 12 years Henley Constructions has built an outstanding reputation for their exceptional attention to detail and elite caliber [sic] of construction. The team prides itself on professionalism, employing motivated staff to ensure streamlined delivery and quality workmanship. Henley Constructions’ key to success lies in working closely with clients, and the long-standing relationships they have built with consultants and subcontractors are a testament to the dynamic, collaborative nature of the business. Having developed boutique and large-scale residential projects from 10 to 500 units, Henley Constructions is on a strong growth trajectory with ambitions to become one of Australia's leading private developer /builders.

(Emphasis added.)

203    Pausing there, the emphasised words above show that Henley Constructions marketed itself as a residential builder. From this marketing, a consumer would not understand that Henley Constructions only built multi-dwelling residential apartments, and not other forms of residential dwellings, such as detached or semi-detached houses.

204    Mr Sarkis’s evidence was that Henley Constructions promotes its business and its projects through online social media platforms including Instagram. Henley Constructions operated its Instagram account under the handle “@HenleyConstructions”.

205    Mr Sarkis’s evidence was that Henley Constructions promotes its construction and development business using business cards, signs with the name “Henley Constructions”, and Henley Constructions’ logo, sponsorships, a website and word-of-mouth recommendations. Henley Constructions also acquired a telephone number that is “1300HENLEY” for use as its business telephone number. Mr Sarkis said that this number was acquired to make it easier for people to get in touch with Henley Constructions, and it is not used in any “special way” to advertise or promote the business of Henley Constructions.

206    Mr Sarkis also gave evidence about the roles of a developer and construction company in the construction of a building. Mr Sarkis gave evidence of the various types of construction and the differences between the construction of houses and commercial and apartment buildings. Mr Sarkis’s evidence was that, when a decision is made to purchase a site for development, a development company will be established as a vehicle to purchase the property. The development company enters into a contract with Henley Constructions for the construction of the relevant units. Henley Constructions then commences construction and, upon completion, the development company completes the sale of the units to purchasers. The contract for sale of the units is between the development company and the purchaser. Henley Constructions does not contract directly with the purchasers of units. However, Mr Sarkis said that Henley Constructions’ reputation is important for effectively marketing the units. Mr Sarkis noted that, between 2011 and 2016, the sale of residential and commercial units constructed by Henley Constructions was managed by a real estate agency called Estate Living. From 2016 to the present, the management of these sales has been handled by a real estate agency called Viridity Real Estate, of which Mr Sarkis is a shareholder.

207    This evidence was presumably directed to differentiating the services provided by Henley Constructions from the services provided by Henley Arch, and differentiating the geographical operation of Henley Constructions’ business. However, much of this evidence was only of marginal relevance to the issues in the proceeding and I do not propose to refer to it any further.

208    In the First Patrick Sarkis Affidavit, Mr Sarkis said that, until he received a letter of demand from Henley Arch in April 2017, he had never heard of Henley Arch. Mr Sarkis said he had not heard of any clients, suppliers or contractors mentioning Henley Arch. Mr Sarkis said he had not heard of anyone confusing the business of Henley Arch with the business of Henley Constructions. Mr Sarkis said that he had not come across or heard of the services of Henley Arch in the course of working on the projects undertaken by Henley Constructions since 2006. Mr Sarkis said that none of his friends, extended family or the contractors or employees of Henley Constructions have ever approached Mr Sarkis to discuss learning of or knowing of Henley Arch. This evidence, however, does not refer to Mr Sarkis’s conversation with a Mr Gavin Napier, to which I will come.

209    Mr Sarkis said that, at least by the time of swearing the First Patrick Sarkis Affidavit, Mr Sarkis had become aware that Henley Arch is a builder of single dwelling homes in Victoria and in new suburbs outside of suburban Sydney. Mr Sarkis said that Henley Constructions has never undertaken or offered to perform such work to the New South Wales or Australian public, and it has never undertaken any work outside of metropolitan Sydney. Mr Sarkis said that any work on single dwelling homes by Henley Constructions had been at the request of personal friends of Mr Sarkis.

Third Patrick Sarkis Affidavit

210    The Third Patrick Sarkis Affidavit set out a general description of the process of property development that Mr Sarkis undertakes as a property developer. Mr Sarkis also set out the various activities undertaken by various contractors in the construction projects undertaken by Henley Constructions. Mr Sarkis said that the overall construction costs for an apartment building of the size and scale undertaken by Henley Constructions are in the order of $10 million or more.

211    Mr Sarkis said that the methods of construction of apartment and commercial buildings are very different from the typical methods of construction for houses. Mr Sarkis’s evidence was that many of the contractors that are engaged for apartment and commercial buildings are not required for construction of houses and, where there are trades that are relevant to both apartments or commercial buildings and houses, there is specialisation within those trades given the differences between the two. Mr Sarkis set out the methods of construction typically involved in apartment and commercial construction.

212    Mr Sarkis said that the level of skill and expertise required to build apartment and commercial buildings is an order of magnitude greater than that which is required to build houses. Mr Sarkis said that a person or business that builds houses ordinarily would not be able to build an apartment or commercial building, or at least not profitably. Mr Sarkis set out examples of matters that make building apartments or commercial buildings different to building houses.

Cross-examination of Mr Sarkis

213    Mr Sarkis was cross-examined about this early experience in the building industry. Mr Sarkis said that, at least in or around 2006, he did not know that businesses that had a formally incorporated name could also trade under a different name.

214    Mr Sarkis said that, by late 2006, he knew he wanted to be Australia’s biggest builder and developer. Mr Sarkis said that, by that time, he knew of Harry Triguboff and Meriton Apartments, and he held them in high regard.

215    Mr Sarkis accepted that from around September 2006 to November 2006, he had some time away from work during which he was making plans to become Australia’s biggest builder. Mr Sarkis said that, during this time, he did not research who his competitors might be in the building industry. Mr Sarkis said he is not someone who searches the internet to research others.

216    Mr Sarkis was cross-examined as to how he came to choose the name “Henley Constructions” for his new company in 2006. Mr Sarkis said that Mrs Sarkis came up with the name. Mr Sarkis said that this was one name on a list of names which Mrs Sarkis had handwritten. Mr Sarkis said that Mrs Sarkis had undertaken an ASIC search of each name on the list. One of the names on the list was “Henley Cs/Ds”, another was “Belcorp Cs/Ds”. Mr Sarkis denied that he knew that Belcorp was a construction company in Sydney at the time. Mr Sarkis accepted that the reference to “Henley Cs/Ds” was a reference to Henley Constructions or Henley Developments. Mr Sarkis said that it was Mrs Sarkis who created the names and that he had no input into the names on the list.

217    Mr Sarkis agreed that a reasonable person considering whether or not to adopt any of the names on the list in 2006, who wanted to become Australia’s biggest builder using one of the names, would have conducted Google searches on each of those names. Mr Sarkis agreed that he did not conduct any such search. It was put to Mr Sarkis that, in the period in or around late 2006, it would have been reasonable for somebody who wants to be the biggest builder in Australia to see who their competitors are or will be. Mr Sarkis said that, now, he would say that was reasonable, but in late 2006 he was “just young” and “hungry”. It was put to Mr Sarkis that, regardless of his personal circumstances, it would have been reasonable for somebody, who wants to be the biggest builder in Australia, to see who that person’s competitors were going to be. Mr Sarkis accepted that it would have been reasonable for somebody to do that in 2006. Mr Sarkis accepted that it would have been reasonable, back in 2006, for somebody interested in becoming Australia’s biggest builder to search the internet to see who the other builders were at the time. Mr Sarkis denied that he visited the website “www.henley.com.au” in 2006.

218    Mr Sarkis was referred to a handwritten note, which is annexure “JML-32” to the Second Lawrence Affidavit, being a copy of a photograph of the hand-written note in annexure “VS-1” to the affidavit of Vanessa Sarkis dated 25 July 2019. This note is reproduced later in these Reasons. It listed the following names: “Belcorp D’s/C’s”, “Henley D’s/C’s”, “Meridian C’s”, “Walford C’s/D’s”, “Bel C’s” and “DeNoble D’s/C’s”. It also contained the words “The future of building”, “Woolwich Pier”, “Trading as” and “DBA” or “Doing business as””.

219    Mr Sarkis said that the only handwriting in this note that was his own were the words “Woolwich Pier” and “The future of building”. Mr Sarkis said the remainder of the handwriting was the handwriting of Mr Sarkis’s wife, Vanessa Sarkis. In cross-examination, Mr Sarkis accepted that, in 2006, a reasonable person, who was considering whether or not to adopt any of the names on the list shown on this note, and who wanted to become Australia’s biggest builder using one of those names, would have conducted Google searches of each of those names. Mr Sarkis accepted that he did not conduct any such searches.

220    Mr Sarkis agreed that he had previously instructed Mr Mubarak to conduct ASIC searches for him. Mr Sarkis said that he expected Mr Mubarak to double check Mrs Sarkis’s ASIC searches, as well as any other searches possible. Mr Sarkis did not refer in his affidavits to Mr Mubarak undertaking any other possible searches. Mr Sarkis accepted that, in the First Patrick Sarkis Affidavit, Mr Sarkis did not say that he instructed Mr Mubarak to conduct any other searches possible. Mr Sarkis said that he relied on Mr Mubarak to do all relevant searches. Mr Sarkis said that he would assume that Mr Mubarak would do all possible searches. But Mr Sarkis said that he did not ask Mr Mubarak to do all possible searches.

221    Mr Sarkis was cross-examined in relation to [32] of Henley Constructions’ Amended Defence filed 9 March 2020. That paragraph states:

At or around [6 December 2006], and at a date no later than 13 December 2006, Patrick Sarkis undertook steps in a good faith attempt to ensure the name “Henley Constructions Pty Ltd” was not similar to other potential competitors in the building and construction services industry.

PARTICULARS

a.     He consulted with his accountant Joseph Mubarak to see if the name was unique. And, at his direction, his accountant performed an ASIC search for existing company names and to the best of Mr Sarkis’ knowledge and understanding at the time his accountant performed all necessary searches for the available lawful use of the name “Henley Constructions” in relation to a building company. However, he does not know if his solicitor performed a search of the Australian Trade Marks Office database.

b.     [Mr Sarkis] consulted with tradesman and trade suppliers in the Sydney are[a], such as Gavin Napier, and queried if the name was unique and whether they had heard of any other companies using a similar name. He discovered from such enquiries that a building company had once used a similar name to Henley Constructions in Sydney but they were no longer trading and had abandoned the name.

c.    [Mr Sarkis] consulted with his solicitor at the time Theo Tsavdaridis. His solicitor did not advise of any issues in using the name. He does not know if his solicitor performed a search of the Australian Trade Marks Office database.

222    Mr Sarkis accepted during cross-examination that a trade supplier by the name of Gavin Napier had told him that a company called Henley Constructions went into administration prior to 2006. Mr Sarkis said he could not recall whether or not he told Mr Mubarak or his solicitor at the time, Mr Tsavdaridis, about this conversation with Mr Napier. Mr Sarkis said that he had already chosen the name Henley Constructions and that this conversation with Gavin Napier happened after he had opened an account with Gavin Napier at some time in 2007. It was put to Mr Sarkis that somebody acting reasonably in their desire to be one of Australia’s biggest builders would have conducted some research into this company that Gavin Napier described as Henley Constructions. Mr Sarkis in answer said: “[n]ow, yes. But then, I wouldn’t have thought of it”.

223    Mr Sarkis cannot explain why the conversation with Gavin Napier was referred to in the particulars to [32] of Henley Constructions’ Amended Defence, but was not referred to in Mr Sarkis’s affidavits. Mr Sarkis denied that the conversation with Gavin Napier was omitted from his affidavit evidence because he thought it was unhelpful to his case.

224    The first sentence of particular “b” to [32] of Henley Constructions’ Amended Defence states that Mr Sarkis “consulted with tradesman and trade suppliers in the Sydney are [a], such as Gavin Napier, and queried if the name was unique and whether they had heard of any other companies using a similar name”. Mr Sarkis agreed that, when he was asking people about the name “Henley Constructions”, he only asked people whether they liked the name or not. Mr Sarkis conceded that this first sentence of particular “b” to [32] of Henley Constructions’ Amended Defence was incorrect.

225    Mr Sarkis also accepted that, after Mr Sarkis had incorporated Henley Constructions, Mr Sarkis became aware of the matters set out in particular “b” to [32] of Henley Constructions’ Amended Defence – that is, Mr Sarkis discovered “that a building company had once used a similar name to Henley Constructions in Sydney but they were no longer trading and had abandoned the name”. However, annexure “JML-1” to the First Lawrence Affidavit shows that Henley Constructions was incorporated on 13 December 2006. In contrast, [32] of Henley Constructions’ Amended Defence states that before (or “no later than”) 13 December 2006, Mr Sarkis undertook steps in a good faith attempt to ensure the name “Henley Constructions Pty Ltd” was not similar to other potential competitors in the building and construction services industry. When this inconsistency was put to Mr Sarkis in cross-examination, Mr Sarkis said he could not recall precisely when he spoke to Mr Napier.

226    Mr Sarkis was also cross-examined about particular “c” to [32] of Henley Constructions’ Amended Defence. Mr Sarkis accepted that he only asked his solicitor at the time, Mr Tsavdaridis, whether or not Mr Tsavdaridis liked the name Henley Constructions. In these circumstances, it is an obvious inference that any consultation with Mr Tsavdaridis did not entail “steps in a good faith attempt to ensure the name “Henley Constructions Pty Ltd” was not similar to other potential competitors in the building and construction services industry”.

227    Given these matters, particulars “b” and “c” to [32] of Henley Constructions’ Amended Defence lack an adequate evidentiary basis and provide no support for the plea in [32] of that Amended Defence.

228    Mr Sarkis was cross-examined about [30] of Henley Constructions’ Amended Defence. That paragraph states (among other things):

On or about 6 December 2006 (“the Selection Date”) Patrick Sarkis chose the name Henley Constructions name being “Henley Constructions Pty Ltd” in good faith.

PARTICULARS

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”.

…

229    As to the particular that Mr Sarkis had “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. However, the evidence of Mr Sarkis’s solicitor, Mr Lance Scott (which is set out below), is that Mr Sarkis did provide these instructions to Mr Scott. These discrepancies have not been explained. This particular is unreliable. I find that it does not provide a basis for the plea in [30] of Henley Constructions’ Amended Defence.

230    Mr Sarkis was taken to annexure “JML-13” to the First Lawrence Affidavit, which is a screenshot of the Henley Constructions website as at 9 April 2013. At that date, the website stated that, “[f]rom small interior renovations to large apartment blocks, the foundation of all [of Henley Constructions’] construction is solid relationships with … clients” (emphasis added). Mr Sarkis accepted that this informed the public that Henley Constructions builds anything from a small interior renovation to a large apartment block. Mr Sarkis accepted that this meant the public would expect Henley Constructions to be able to build an interior renovation, a detached home and a large apartment block. In these circumstances, again, consumers would not have understood that Henley Constructions’ business was limited to “multi-dwelling residential apartments”, or that Henley Constructions did not construct, or was not capable of constructing, detached or semi-detached houses.

231    The Henley Constructions website as at 9 April 2013 also stated that Henley Constructions “approach[es] each project with a cooperative mindset, working with clients, architects and subcontractors toward the common goal – successful project delivery”. Mr Sarkis accepted that statement was an accurate description of Henley Constructions’ role on a construction project. Mr Sarkis accepted that entailed ensuring each project is matched with appropriate resources and expertise. Mr Sarkis accepted that was Henley Constructions’ role, whether it was completing a small interior renovation or a large apartment block. Such evidence is consistent with Mr Harvey’s evidence as to the role of Henley Arch in respect of building projects completed by Henley Arch.

232    Mr Sarkis was taken to Exhibit A19, which were extracts from Henley Constructions’ Facebook page. That Facebook page included the following:

233    Mr Sarkis accepted that this logo was an adoption by Henley Constructions of a new logo. The Facebook post is dated 15 February 2018. Mr Sarkis accepted that, when compared to previous logos, in this logo, the word “Constructions” was much smaller and the word “Henley” was more prominent. Mr Sarkis said his “marketing guys” came up with this design. Mr Sarkis said that this was used because it made the word “Constructions” fit under the word “Henley”. Mr Sarkis was referred to the following, previous Henley Constructions’ logo which appeared on its website from November 2009:

234    By comparing these logos, it can be seen that, in the new logo that was posted on Henley Constructions’ Facebook page at or around 15 February 2018, the word “Henley” is larger, in bold text and far more prominent. The adoption of this logo, in which the word “Henley” is more prominent”, occurred after Mr Sarkis had been put on notice of Henley Arch’s claims in Henley Arch’s cease and desist letter to Henley Constructions dated 13 April 2017. It was put to Mr Sarkis that there is no evidence that Henley Constructions’ new logo, with the more prominent use of “Henley”, appeared anywhere before Henley Constructions received the 13 April 2017 letter of demand from Henley Arch. Mr Sarkis said he did not know whether or not that was that case.

235    Mr Sarkis was taken to the Instagram page of Henley Constructions (Exhibit A20). That page contained photographs of buildings constructed by Henley Constructions. Those buildings had signage affixed to them which included the name of the building and then the word “by Henley Constructions”. For example, one building had signage which stated “Noah by Henley Constructions”. Mr Sarkis accepted that this “by Henley Constructions” signage was implemented after April 2017.

236    Mr Sarkis was taken to a letter to Henley Arch from Henley Constructions’ then solicitors, HP Legal, dated 10 May 2017 (Exhibit A16). That letter responded to Henley Arch’s letter of demand dated 13 April 2017 (which is set out above). That letter stated that:

At all times over the past 10 years our client has developed and used the distinctive logo … which appears below:

237    It was put to Mr Sarkis that, if, at the date of this letter (being 10 May 2017), Henley Constructions had adopted the new logo (which is referred to above), the new logo would have appeared in this 10 May 2017 letter. Mr Sarkis accepted that proposition in cross-examination.

238    Mr Sarkis was also cross-examined about various aspects of Henley Constructions’ marketing. Mr Sarkis said he had no knowledge about marketing. Mr Sarkis accepted that there were marketing employees employed by Henley Constructions who were better placed to give evidence about Henley Constructions’ marketing. Those employees did not give evidence in this proceeding.

239    In cross-examination, Mr Sarkis also said that, in 2019, Henley Constructions lent money to another of Henley Constructions’ witnesses, Mr Manuel Becerra. The amount of that loan was set out in confidential Exhibit A21. It is unnecessary to refer to the quantum of that loan. It is sufficient to state that I have reviewed confidential Exhibit A21 and the amount of money lent is not insubstantial. I will return to this matter when addressing Mr Becerra’s evidence. Mr Sarkis confirmed that loan was repaid. Mr Sarkis said he could not recall the precise terms of the loan, but he said that he did not make any money in relation to it.

Re-examination of Mr Sarkis

240    It will be recalled that in cross-examination, Mr Sarkis agreed that a reasonable person, who was considering whether or not to adopt any of the names on the list created by Mrs Sarkis, and who wanted to become Australia’s biggest builder using one of those names, would have conducted Google searches of each of those names. In re-examination, Mr Sarkis was asked what he understood by the words “reasonable person”. Mr Sarkis said that he meant a “class of people, accountants, lawyers”.

241    I make further findings on Mr Sarkis’s evidence later in these Reasons.

Vanessa Sarkis

242    The respondents relied on an affidavit of Mrs Vanessa Sarkis sworn 25 July 2019.

243    Mrs Sarkis has been married to Mr Patrick Sarkis since 2008.

244    Mrs Sarkis gave evidence that, from 1999 up until 2004, she worked for a promotional merchandise company, “Giant M”, in Marrickville, as an accounts payable and receivable clerk and later as an account manager. Giant M undertook promotions for large companies such as Channel 9, Tooheys, Coca Cola, as well as smaller businesses such as Leagues Clubs on the central coast of New South Wales. Mrs Sarkis said that, in this role, if she had to learn about a company prior to visiting the company, she would undertake Google searches to obtain information about a particular company.

245    Mrs Sarkis said that, on or around 10 September 2006, Mr Sarkis told Mrs Sarkis that he wanted to be the biggest builder and developer in Australia. Later in 2006, Mrs Sarkis told Mr Sarkis that she would come up with a few names for Mr Sarkis’s planned construction company.

246    Mrs Sarkis said that, prior to 2006, Mrs Sarkis knew how to check the ASIC website to see if a company name was registered with ASIC. Mrs Sarkis had experience undertaking searches on ASIC’s database for Australian Business Numbers and searches to ascertain whether a company name was available. Mrs Sarkis was also aware that, while companies have formal names, companies also use “trading as” to trade under another name.

247    Mrs Sarkis’s evidence was that she had first heard of the name “Henley” in mid-2006 when watching an American reality television show and one of the participant’s sisters was named “Henley”. At that point, Mrs Sarkis only knew that “Henley” as a name was used by someone in America as a female’s first name. Mrs Sarkis’s evidence was that she subsequently conducted a Google search of the name “Henley” and found that it was of English origin and meant “high meadow”. In cross-examination, Mrs Sarkis said that she would have searched Google for “Henley name meaning”.

248    Mrs Sarkis said that she was also drawn to the name “Henley” because it was a suburb located on the lower north shore of Sydney, near where she and Patrick Sarkis would like to live.

249    Mrs Sarkis said that she had decided to come up with a list of names for Patrick Sarkis’s construction company. The list was at first large and was then shortened to a list comprising the following names:

(1)    “Belcorp D’s/C’s”;

(2)    “Henley D’s/C’s”;

(3)    “Cordell D’s/C’s”;

(4)    “Meridian C’s”;

(5)    “Walford C’s/D’s”;

(6)    “Bel C’s”;

(7)    “Denoble D’s/C’s”.

250    Mrs Sarkis said that she undertook an ASIC search to make sure that each of the names was available for use. In her affidavit, Mrs Sarkis said that she knew the importance of conducting an ASIC search from her schooling and/or her time with Giant M. Mrs Sarkis said that at no time during any of her online searches did she come across any ties between “Henley” and any construction or building companies.

251    Having confirmed that each of the above names was available for use on ASIC’s database, Mrs Sarkis wrote the list down and provided to Mr Sarkis the shortlist of names in late September or early October 2006. That handwritten list was annexure “VS-1” to Mrs Sarkis’s affidavit sworn 25 July 2019 (which is extracted later in these Reasons).

252    When Mrs Sarkis showed the shortlist of names to Mr Sarkis in late September or early October 2006, Mrs Sarkis said Mr Sarkis also loved the name “Henley”. Mrs Sarkis explained to Mr Sarkis that she had checked on the ASIC website to assess whether the name was available and it was available. Mrs Sarkis said that, after that, she left the matter in Mr Sarkis’s hands.

253    It was put to Mrs Sarkis, in cross-examination, that she undertook Google searches to come up with the list of potential names for Patrick Sarkis’s construction company. Mrs Sarkis at first said that she could not recall undertaking Google searches for any of the names on the shortlist. The handwritten shortlist had next to some names the designation “D’s/C’s” denoting Developments/Constructions. This notation appeared against each name on the shortlist save for Meridian where only the notation “C’s” appeared. Similarly, against the name “Bel” there was only the designation “C’s”.

254    In cross-examination, it was put to Mrs Sarkis that, in 2006, Mrs Sarkis discovered that Belcorp was a building and construction maintenance company based in Sydney, Mrs Sarkis liked the name and put it on her shortlist. Mrs Sarkis denied that was the case. Mrs Sarkis was asked how she came up with the name “Belcorp”. Mrs Sarkis said she cannot remember. Mrs Sarkis said she would have searched for Belcorp Development and Belcorp Constructions and, if they were available using an ASIC search, she would have written them on her shortlist of names.

255    Mrs Sarkis was taken to annexure “JML-34” to the Second Lawrence Affidavit. Part of that annexure was an extract of the website www.cordell.com.au as it appeared on 19 August 2006. That website redirected to www.reedconstructiondata.com.au which referred to the “Cordell Valuer” and the “Cordell Connect” product receiving a “major upgrade”. Mrs Sarkis said she had never seen this website before.

256    Mrs Sarkis was asked why “Meridian C’s” appeared on the list, and not “Meridian D’s/C’s”. Mrs Sarkis said, as far as she can remember, Meridian Developments may not have been an available name on ASIC’s database and, as a result, she did not put it on her shortlist of names. It was put to Mrs Sarkis that, if “Meridian Developments” was a company name already being used, and if Mr Sarkis was to adopt “Meridian Constructions” as a business name, that would cause problems and confusion in the market. Mrs Sarkis said she did not remember thinking that at the time.

257    Mrs Sarkis was also taken to a screenshot of the website www.meridianconstruction.com.au as it appeared on 20 August 2006. It was a website for “Meridian Construction Services”. The website indicates that at that time it was located in Banksia, New South Wales. There was then the following exchange with Counsel for Henley Arch:

Yes. You see this is a website of about August 2006, and it is for a company called Meridian, and its Meridian Construction Services. Do you see that?---Yes, I can see that.

Yes. Can I put it to you that when you put together this list, one of the things you would have [done] was at least search in Google each of the names you put on this list. Do you agree with that?---I can’t remember searching each and every one of them on Google, but I would have searched the name, definitely, on ASICs, the full name, Meridian Construction and Meridian Developments.

… You’re choosing a name which will become the name … for what will become Australia’s biggest building company, and I put it to you that when you’re doing that, you would have searched each of these names in Google, wouldn’t you?---I remember searching the name. I would have searched the name and then “Development” and “Construction”, like, each one in particular.

Yes. With Google?---With Google. Yes, with Google.

And I put it to you, if you had have done that for Meridian Constructions, you would have come up with this website and realised that there was Meridian, Meridian Construction Services. You see that there?---Yes, I can see that.

… Do you agree that you would have seen this website [for Meridian Construction Services] back in 2006 when you were coming up with these names?---No.

258    Mrs Sarkis, under cross-examination, denied undertaking a Google search and identifying the name “Bel” as a potential company name. Mrs Sarkis denied that the reason the shortlisted name “Bel” did not have a notation “D’s” next to it on the shortlist was because that name had already been taken.

259    As to the name “Bel C’s” which appeared on the list, Mrs Sarkis was taken to the website www.belcontracting.com as it appeared at 4 October 2006. It was put to Mrs Sarkis that, in or around 2006, she did some searching on the internet relating to construction companies and came across this website concerning Bel Contracting. Mrs Sarkis denied that she had ever seen this website before. Mrs Sarkis, however, agreed that she must have identified a company called “Bel Developments” because it did not appear on Mrs Sarkis’s shortlist. Mrs Sarkis said she did not make any attempt to ascertain what business was conducted by “Bel Developments”.

260    Part of annexure “JML-34” to the Second Lawrence Affidavit was an extract from the website www.denoblehomes.com as at 23 October 2006. Mrs Sarkis said she had not previously come across a company called Denoble Homes.

261    Mrs Sarkis also said that she had not come across a company called Walford Homes.

262    Counsel for Henley Arch had the following exchange with Mrs Sarkis:

So when you said you and [Mr] Sarkis spoke about selecting a name for a company that was fitting for a construction company and suitable for growth, you looked for names that were already in use in the construction industry in one way or another and put them on the list, unless they appeared directly in a ASIC search?---Yes.

263    Mrs Sarkis, under cross-examination, did not have a good recollection of the events and matters that were deposed to in detail in her affidavit sworn 25 July 2019. Save for the explanation of first hearing the name “Henley” by watching the reality TV show, Mrs Sarkis could not explain how she came to list “Henley” and the other names on the shortlist. Other than her evidence in respect of the names Meridian and Henley Constructions (to which I will come), she denied undertaking Google searches in respect of the other names on the shortlist. Each name on the shortlist was the name of an existing building, construction or development company which was carrying on business in 2006.

264    Mrs Sarkis could not explain how she came up with the name “Bel”. Mrs Sarkis accepted that the word “Bel” without an “l” is a rather strange spelling of the word Bel. Mrs Sarkis denied that she came up with the name “Bel” after undertaking searches of construction companies on the internet when she came across the website of “Bel Contracting”. Mrs Sarkis undertook an ASIC search and found that Bel Constructions was an available name but that Bel Developments was not available. That was why the shortlist refers only to “Bel” with the designation “C’s” and not with the designation “D’s/C’s” as Bel Developments was not available.

265    Mrs 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 www.henley.com.au. 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”.

266    Mrs Sarkis was taken to annexure “LNS-6” to the affidavit of Lance Newman Scott affirmed 9 May 2019. That annexure showed (among other things) the results of a search using Google for the word “Henley” on 28 March 2007, and the fourth search result listed is the website www.henley.com.au, being the website for the Henley Properties Group. Mrs Sarkis denied that she ever saw this. Mrs Sarkis said she never searched for the word “Henley” on its own.