FEDERAL COURT OF AUSTRALIA

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

File number(s):

VID 1240 of 2018

Judgment of:

ANDERSON J

Date of judgment:

5 November 2021

Catchwords:

TRADE MARKS applicant commenced trading in 1989 – applicant’s registered trade marks include HENLEY, HENLEY PROPERTIES, HENLEY WORLD OF HOMES, HENLEY ESSENCE, HENLEY RESERVE and HENLEY COLLECTION – applicant’s HENLEY and HENLEY PROPERTIES trade marks registered in 2006 – first respondent commenced trading in or around 2006 under and by reference to HENLEY CONSTRUCTIONS – applicant became aware of respondent in or around 2017

TRADE MARKS – whether first respondent used applicant’s relevant trade marks in the course of trade – whether first respondent’s use of relevant signs was use of a trade mark in the course of trade – whether there was substantial identity or deceptive similarity – whether first respondent used relevant signs in relation to relevant services – whether first respondent has infringed applicant’s registered marks – first respondent has infringed applicant’s registered marks pursuant to s 120(1) of the Trade Marks Act 1995 (Cth)

CONSUMER LAW – ss 18, 29(1)(g) and 29(1)(h) of the Australian Consumer Law – ss 52, 53(c) and 53(d) of the Trade Practices Act 1974 (Cth) – whether first respondent contravened those provisions – relevant date for assessing applicant’s reputation – assessment of applicant’s reputation – consideration of class of public affected – whether first respondent’s conduct constituted misrepresentations – whether evidence of confusion – first respondent’s conduct in using the names “HENLEY CONSTRUCTIONS” and “HENLEY” was misleading or deceptive in contravention of relevant provisions

TRADE MARKSfirst respondent raised defence under s 122(1)(fa) of the Trade Marks Act 1995 (Cth) – whether first respondent has a right to register HENLEY CONSTRUCTIONS – whether such registration would be refused on basis of ss 58, 44(2), 42(b) or 60 of Trade Marks Act 1995 (Cth) – first respondent did not establish defence under s 122(1)(fa)

TRADE MARKS – first respondent raised defence under s 122(1)(a)(i) of the Trade Marks Act 1995 (Cth) – whether first respondent has used own name in good faith – first respondent’s initial use of “HENLEY CONSTRUCTIONS” and “HENLEY” was not a good faith use of Henley Constructions’ name pursuant to s 122(1)(a)(i)

TRADE MARKS – first respondent raised defence under s 124 of the Trade Marks Act 1995 (Cth) – first respondent failed to establish defence

TRADE MARKS – cross-claim – first respondent claimed applicant’s trade marks did not have relevant inherent ability to distinguish relevant services – alleged applicant’s trade marks accepted by the Registrar of Trade Marks on the basis of evidence or representations that were false in material particulars – alleged relevant non-use by applicant – assessment of applicant’s use – consideration of discretion in ss 101(3) and 101(4) of Trade Marks Act 1995 (Cth) – cross-claims dismissed

TRADE MARKS – ancillary liability – whether second respondent was joint tortfeasor with first respondent in its infringement of each of the applicant’s relevant marks – whether second respondent was relevantly involved in contraventions of the Australian Consumer Law or Trade Practices Act 1974 (Cth)second respondent was joint tortfeasor and relevantly involved

TRADE MARKS – relief – non-pecuniary relief – consideration of injunctions and declarations

Legislation:

Competition and Consumer Act 2010 (Cth), Schedule 2, ss 18, 29(1)(g), 29(1)(h)

Trade Marks Act 1995 (Cth), ss 7(1), 33, 41, 42(b), 44, 55, 57, 58, 60, 62, 88, 62, 92, 100, 101, 102, 120, 122(1)(a)(i), 122(1)(fa), 124

Trade Practices Act 1974 (Cth), ss 52, 53(c), 53(d)

Cases cited:

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163

Apple v Registrar of Trade Marks [2014] FCA 1304

Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8

Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634

Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2013) 250 CLR 640

Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130

Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93

Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6

Anheuser-Busch, Inc v Budejovicky Budvar, Naraodni Podnik [2002] FCA 390

Bavaria NV v Bayerischer Brauerbund EV [2009] FCA 428

Blount Inc v Registrar of Trade Marks [1998] FCA 440

Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235

Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851

Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45

Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495

Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511

Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184

Community First Credit Union Limited v Bendigo and Adelaide Bank Limited [2019] FCA 1553

Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company [2018] FCA 1014

E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd (2010) 241 CLR 144

E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934

Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58

Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235

Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590

In-N-Out Burgers Inc v. Hashtag Burgers Pty Ltd [2020] FCA 193

Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406

Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326

JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20

Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 29

Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639

McCormick & Co Inc v McCormick [2000] FCA 1335

Monster Energy Company v Mixi Inc [2020] FCA 1398

Natures Blend Pty Ltd v Nestle Australia Ltd [2010] FCA 198

Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380

Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130

Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1

Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191

Parker-Knoll Ltd v Knoll International Ltd [1961] RPC 346

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83

Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174

Re British Hoist & Crane Coy Ltd’s Trade Mark (1955) 72 RPC 66

Sensis Pty Ltd v Senses Direct Mail and Fulfilment Pty Ltd [2019] FCA 719

Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407

Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 3) [2010] FCA 1162

Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664

State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137

The Change Group International PLC v City Exchange Mart Pty Ltd [2013] FCA 1048

The Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721

Tivo Inc v Vivo International Corp Pty Ltd [2012] FCA 252

Toddler Kindy Gymbaroo Pty Ltd v. Gymboree Pty Ltd [2000] FCA 618

Truong Giang Corporation v Quach (aka Quach) [2015] FCA 1097

Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd [2020] FCA 82

Vendor Advocacy Australia Pty Ltd v Seitanidis [2013] FCA 971

Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd and Anor [2010] FCA 1367

Division:

General Division

Registry:

Victoria

National Practice Area:

Intellectual Property

Sub-area:

Trade Marks

Number of paragraphs:

1005

Date of last submission/s:

1 October 2021

Date of hearing:

12-16 April 2021 and 22-23 April 2021

Counsel for the First Applicant:

Tom Cordiner QC and Lucy Davis

Solicitor for the First Applicant:

Ashurst

Counsel for the First Respondent:

John Hennessy SC and Andrew Sykes

Solicitor for the First Respondent:

Gestalt Law

ORDERS

VID 1240 of 2018

BETWEEN:

HENLEY ARCH PTY LTD

Applicant

AND:

HENLEY CONSTRUCTIONS PTY LTD

First Respondent

PATRICK SARKIS

Second Respondent

AND BETWEEN:

HENLEY CONSTRUCTIONS PTY LTD

Cross-Claimant

AND:

HENLEY ARCH PTY LTD

Cross-Respondent

order made by:

ANDERSON J

DATE OF ORDER:

5 November 2021

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:

Mark

Reg. No

Priority Date

Registered Services

HENLEY

1152820

18 December 2006

Building and construction services (class 37); architectural, engineering, design, drafting and interior design services (class 42)

1152818

18 December 2006

HENLEY WORLD OF HOMES

1152819

18 December 2006

HENLEY ESSENCE

1806558

2 November 2016

Building and construction services (class 37); architectural, engineers, design, drafting and interior design services including construction design and construction drafting (class 42)

HENLEY RESERVE

1806561

2 November 2016

HENLEY COLLECTION

1806570

2 November 2016

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.

Year

Desktop website visits

Mobile website visits

Total

2013

152,116

4,149

156,265

2014

259,457

60,524

319,981

2015

235,741

82,565

318,306

2016

212,713

94,879

307,592

2017

321,459

6,848

328,307

2018

299,510

N/A

299,510

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:

Year

Desktop website visits from Victoria

Mobile website visits from Victoria

Total

2013

110,439

3,610

114,049

2014

179,823

52,259

232,082

2015

180,969

71,417

252,386

2016

159,928

82,947

242,875

2017

275,336

6,149

281,485

2018

261,860

N/A

261,860

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.

Year

Desktop website visits from Queensland

Mobile website visits from Queensland

Total

2013

17,233

122

17,355

2014

40,526

2,137

42,663

2015

19,980

2,768

22,766

2016

18,633

3,358

21,991

2017

12,152

189

12,152

2018

8,548

N/A

8,548

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.

Year

Desktop website visits from South Australia

Mobile website visits from South Australia

Total

2013

6,287

76

6,363

2014

6,281

1,229

7,510

2015

5,256

1,472

6,728

2016

3,842

1,833

5,675

2017

4,964

108

5,072

2018

5,313

N/A

5,313

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.

Year

Houses completed in NSW

2000/01

465

2001/02

174

2002/03

51

2003/04

6

2004/05

10

2005/06

1

2006/07

4

2007/08

0

2008/09

15

July–December 2009

23

2010

26

2011

70

2012

137

2013

178

2014

208

2015

165

2016

174

2017

175

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:

Year

Desktop website visits from New South Wales

Mobile website visits from New South Wales

Total

2013

15,295

351

15,646

2014

24,805

5,029

29,834

2015

25,329

6,774

32,103

2016

25,635

7,554

33,189

2017

25,682

406

26,088

2018

21,098

N/A

21,098

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 Lawrences 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:

Project Name/ Completion Date

Location

Number of units

1

“Camperdown project” completed in June 2008

115-135 Church Street, Camperdown

24 Units

2

“Homebush project” completed in August 2009

4-6 Marlborough Road, Homebush West

23 Units

3

“Chippendale project” completed in October 2011

147-149 Regents Street, Chippendale

6 Units + 1 Commercial

4

“Sienna” completed in 2012

15-17 Larkin Street, Camperdown

12 Units

5

“Contempo” completed in 2015

456-458 Gardeners Road, Alexandria

26 Units + 2 Commercial

6

“Camperdown HQ” completed in 2015

72-76 Parramatta Road Camperdown

22 Units + 1 Commercial

7

“128 Henley” completed in 2016

128 Parramatta Road, Camperdown

13 Units + 1 Commercial

8

“Aleya” completed in 2017

1 Sparkes Lane, Camperdown

10 Units

9

“The Birdwood” completed in 2017

203 Birdwood Road, Georges Hall

27 Units + 3 Commercial

10

“Chester Gardens” completed in 2017

59-65 Chester Avenue, Maroubra

32 Units

11

“Liberty” completed in 2018

507-509 President Avenue, Sutherland

26 Units

12

“Inspire” completed in 2018

1356-1362 Botany Road, Botany

28 Units + 1 Commercial

13

“Belle and Lilly Waterloo” completed in 2018

233-235 Botany Road, Waterloo

29 Units + 1 Commercial

14

St Charbel’s College Care Centre completed in 2019

81-83 Wattle Street, Punchbowl

63 room, 75 bed Nursing Home

15

“Aperture” completed in 2019

2-8 Arthur Road, Marrickville

38 Residential Units

16

“Quartier Drummoyne” which was to be completed in 2020

9 Wrights Road, Drummoyne

11 Residential Units

17

“Monash Road Gladesville”, which is to be completed in 2021

6a-8c Monash Road, Gladesville

43 Units + 2 Commercial mixed use

18

“184 New Canterbury Road Lewisham”, which is at the pre-approval stage

183 New Canterbury Road, Lewisham

Mixed use development. Project in planning stage (TBC)

19

“218 New Canterbury Road Lewisham”, which is at the pre-approval stage

218 New Canterbury Road, Lewisham

Mixed use development. Project in planning stage (TBC)

20

“27 Church Street Camperdown”, which is at the pre-approval stage

27 Church Street, Camperdown

5 Units mixed use development (TBC)

21

“1444-1447 Botany Road Botany”

1445-1447 Botany Road, Botany

31 Units + 1 Commercial Unit – mixed use development (TBC)

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.

267    Mrs Sarkis was taken to a different part of annexure LNS-6 to the affidavit of Lance Newman Scott affirmed 9 May 2019. That part showed the results of a search of Google for the word Henley with at least one of homes, building or marketing undertaken on 28 March 2007. The second search result listed is the website for the Henley Properties Group. Mrs Sarkis denied having conducted such a search in 2006 and said she had never seen such search results.

268    Mrs Sarkis said that, if she had seen the Henley Properties Group website in 2006, she probably would have told Mr Sarkis about it. However, Mrs Sarkis said she had not seen the Henley Properties Group website.

269    I make further findings on Mrs Sarkis’s evidence later in these Reasons.

Lance Newman Scott

270    An affidavit affirmed by Mr Lance Newman Scott on 9 May 2019 was filed in this proceeding. Mr Scott is a principal of the solicitors for Henley Constructions and Mr Sarkis, Gestalt Law.

271    Henley Constructions’ cross-claim includes claims that trade mark number 1152820, being the HENLEY mark, was accepted on the basis of representations that were false in material particulars.

272    On 19 February 2019, Gestalt Law made a request to IP Australia for a copy of the IP Australia file in relation to the HENLEY mark. A copy of the Trade Marks Office file which was provided in response to the request is annexed to Mr Scott’s affidavit. Annexure LNS-6 are various searches conducted by the relevant examiner, annexure LNS-7 is the first examination report dated 28 March 2007, annexure LNS-9 is the second examination report dated 20 January 2009, annexure LNS-14 is an email and letter from Blake Dawson to IP Australia (both dated 28 April 2009), and annexure LNS-20 is a clear examination report.

273    On 29 March 2019, Mr Scott accessed the IP Australia search database to obtain details of Australian trade mark registration number 1152820, being HENLEY. A copy of this status report is annexed to Mr Scott’s affidavit as annexure LNS-1. This status report includes, among other things, an endorsement which states [p]rovisions of subsection 41(5) applied.

274    Mr Scott gave honest evidence, which I accept, of the inquiries which he made with IP Australia to obtain details of the examination reports in relation to the trade mark registration number 1152820 (for the “HENLEY” mark).

275    Mr Scott was also cross-examined about the contents of Henley Constructions’ Defence and Amended Defence. Mr Scott said that the following matters were based on instructions given to Mr Scott by Mr Patrick Sarkis:

(1)    factual matters set out in [30] of the Amended Defence;

(2)    the particulars to [30] of the Amended Defence;

(3)    the particulars to [32] of Henley Constructions’ Amended Defence; and

(4)    a statement in [34] of the Amended Defence, being that Henley Constructions has at all time[s] used Henley Constructions, and occasionally Henley in good faith.

Manuel Albert Becerra

276    An affidavit affirmed 23 April 2020 by Mr Manuel Albert Becerra was filed in this proceeding.

277    Mr Becerra is the founder and director of a Sydney-based architectural firm, Architects Becerra Pty Ltd. Mr Becerra, in 1996, obtained a Bachelor of Architecture from the University of New South Wales. Mr Becerra was employed at a number of Sydney-based architectural firms until he established Architects Becerra in 2009. The firm undertakes mid-rise mixed-use residential developments, commercial developments, hotels and motels, council works such as community and sports amenities, and boarding houses.

278    Mr Becerra has, for some years, been commissioned by Henley Constructions to design a number of mixed-use developments varying from four to ten storeys. Each of these projects was located in suburban Sydney.

279    Mr Becerra’s evidence was that residential dwellings can be broken down into two broad categories, namely detached houses and higher density buildings. The higher density buildings can be divided into split apartments known as flats or units and semi-detached dwellings such as townhouses, terraces and semi-detached houses.

280    Mr Becerra’s evidence was that the Building Code of Australia (BCA) is contained within the National Construction Code (NCC). The NCC provides the minimum necessary requirements for safety and health, amenity and accessibility, and sustainability in design, construction, performance and liveability of new buildings throughout Australia. Mr Becerra’s evidence was that, depending on the class of building, different standards under the NCC apply. For example, different standards apply to domestic or residential buildings as opposed to multi-level residential, commercial, industrial and public buildings.

281    Mr Becerra said that an architect’s role may differ depending on the type of dwelling. Mr Becerra’s affidavit set out certain design requirements which are of particular relevance to developments in New South Wales. Mr Becerra also set out requirements relevant to developments in Victoria and Queensland.

282    Mr Becerra said that an architect’s role in relation to detached houses is different from apartments in that a detached house is not required to be designed by a registered architect. A house may be designed by a draftsperson (who may have obtained a certificate, diploma or other qualification in building design), by the builder or by the owner or any other person who has no qualification or training in building design or design. Mr Becerra said that development and construction timelines for both detached houses and apartments are long and variable, and the time taken at each stage can vary greatly. Mr Becerra set out the differences in the labour and material inputs used in the construction of houses compared with apartments. Mr Becerra also said that, because of the differences between apartments and detached houses, professionals involved in design and construction – namely, architects, builders and construction businesses – specialise in either apartments/commercial buildings or detached houses, rather than both typologies.

283    As I have stated, Mr Becerra’s evidence was that residential dwellings in Australia can be broken down into two broad categories, namely detached houses and higher-density buildings. Mr Becerra’s evidence was that higher-density buildings can be further split into apartments (also known as flats or units) and semi-detached dwellings (such as townhouses, terraces and semi-detached houses). In cross-examination, Mr Becerra was asked what led him to discuss these matters in his affidavit. That is because the questions or matters Mr Becerra was asked to opine about were not clear from Mr Becerra’s affidavit. Mr Becerra said that he was asked (presumably by Henley Constructions’ solicitors and/or counsel) to find out what type of building typology Henley Constructions completed.

284    In cross-examination, Mr Becerra accepted that he is not currently a registered builder. Mr Becerra said that he had previously been a registered builder from approximately 1988 to 1998, but he never used that licence. Mr Becerra accepted that he had no experience as a builder. Mr Becerra accepted that he had a business relationship with Mr Sarkis that spanned approximately 10 years. Mr Becerra said he hoped that relationship would continue into the future. Mr Becerra accepted that Henley Constructions had lent money to Mr Becerra’s son. Mr Becerra accepted that the loan amount was the figure shown in confidential Exhibit A21. As stated above, that amount of money is not insubstantial. Mr Becerra denied that his ongoing relationship with Mr Sarkis, and the existence of this loan, influenced Mr Becerra to give evidence that assisted Henley Constructions’ case in this proceeding.

285    Mr Becerra’s evidence was that an architect’s role may differ depending on the type of dwelling. However, in cross-examination, Mr Becerra accepted that every project has complexities, and complexity can depend on the site and what a client wants, rather than necessarily on the type of building (e.g. multi-dwelling or detached house) being constructed: Transcript, p 418. Mr Becerra also accepted that an architect’s role depends on the commission an architect is undertaking. Mr Becerra’s evidence was that, in addition to drawing the design, an architect will also typically integrate the work of the planners and engineers, the needs of council, the BCA and any of the 6,000 applicable standards. However, Mr Becerra accepted that Mr Becerra’s clients would expect an architect to ensure that this integration of work occurs whether or not the client is a client for a single detached building or an apartment block.

286    I was informed that the relevance of Mr Becerra’s evidence was to demonstrate that the building market is divided between builders who undertake construction of dwellings and builders who undertake construction of apartments/commercial buildings which may either be low-rise or high-rise.

287    Mr Becerra gave honest evidence in respect of the questions he was asked to express an opinion about. However, I do not accept that he was an independent expert. First, as has been stated above, Mr Becerra’s firm has been commissioned by Henley Constructions in relation to a range of developments, and Mr Becerra has said that he hopes that relationship will continue into the future. Second, Mr Sarkis gave evidence that he has lent a not insubstantial amount of money to Mr Becerra. In cross-examination, Mr Becerra noted that this money was in fact lent to Mr Becerra’s son. Third, 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.

288    In light of the matters already referred to, I do not accept that Mr Becerra was an objective or impartial expert. In the circumstances, I give Mr Becerra’s evidence minimal weight.

Mardiros Tatian

289    An affidavit affirmed 24 April 2020 by Mr Mardiros Tatian was filed in this proceeding on behalf of the respondents.

290    Mr Tatian is a Building Certifier and Building Consultant. He is the founder and director of the Sydney-based building regulations consultancy Building Innovations Australia.

291    Mr Tatian, as a building certifier, has worked with Henley Constructions on eight projects in suburban Sydney. Mr Tatian gave evidence as to the role of building certifiers in the construction of a new building.

292    Mr Tatian said that the work he does on a daily basis in the building and construction industry broadly falls into two separate areas. First, is Mr Tatian’s role as a private building certifier. Second, is Mr Tatian’s role as a consultant to the building industry. Mr Tatian said that private certifiers effectively function as independent regulators and public officials and do not work for builders, developers or homeowners. Instead, certifiers issue certificates if all legislative requirements are met. On the other hand, consultants are engaged by builders, developers or homeowners to provide expert services in relation to various aspects of building and construction, including in relation to compliance with regulations and standards.

293    Mr Tatian gave evidence about the BCA, which is contained within the NCC. Mr Tatian said that the NCC sets out a nationally consistent framework of regulation for the construction of new buildings.

294    Mr Tatian gave evidence of the differences between the construction of houses and apartment buildings, including differences in the timelines and methods of construction. Mr Tatian said that, because apartment construction is so much more complex than house construction, in many instances, only specialised contractors are experienced enough and qualified to carry out certain work. Mr Tatian said that, for example, the formwork, reinforcement and concrete installers and suppliers that work on apartment construction and high rise buildings typically specialise on these types of buildings. Mr Tatian said that this is because their skills in constructing retaining walls, columns, suspended and elevated concrete slabs, fire stairs, lift shafts, car parking and ramps and working at elevated levels would not be required for houses which have very simple concrete footings and slabs.

295    Whilst Mr Tatian said that there was some overlap in the sequence of steps involved in the construction of a dwelling as opposed to an apartment, the construction of apartment buildings was, in Mr Tatian’s opinion, vastly more complex than house construction. Because of this difference, Mr Tatian’s evidence was that the professionals involved in design and construction, namely architects, builders and construction businesses, tend to specialise either in apartments/commercial buildings or detached houses. Mr Tatian’s evidence was that professionals involved in the building and construction of detached houses would be unlikely to have the qualifications or expertise for the construction of apartments and commercial buildings.

296    I was informed that the purpose of cross-examining Mr Tatian was to show that, while Mr Tatian’s evidence was that there is a distinction between builders that build houses and builders that build apartments, there is, in fact, quite a degree of overlap between those two types of building.

297    In cross-examination, Mr Tatian accepted that he is not a building contractor, and he does not engage building subcontractors to work on building sites. Mr Tatian accepted that he does not perform the same role as a builder on a project. Mr Tatian accepted that, generally, in construction of any structure, there are overlaps as to the steps that need to be undertaken. That was consistent with the evidence of Mr Harvey for Henley Arch. Mr Tatian also accepted that, if all a consumer knew about a builder was that the builder had built a house, a consumer would not necessarily be aware that the builder could not build an apartment building.

298    I turn to further findings on the evidence.

FURTHER RELEVANT FINDINGS ON THE EVIDENCE

299    The evidence of Mr and Mrs Sarkis is central to this proceeding. Indeed, counsel for the respondents appeared to accept that, if the evidence of Mr and Mrs Sarkis is not accepted, and Henley Arch’s characterisation of that evidence is accepted, many (and potentially all) of Henley Constructions defences are significantly, and potentially fatally, damaged: see Transcript, 615-617.

300    I turn to make findings on the evidence of Mr and Mrs Sarkis. In addition to the findings that I have already made above, I make the following findings on the evidence of Vanessa and Patrick Sarkis.

Mrs Sarkis

301    I have considered the evidence of Mrs Sarkis, particularly the answers which she gave in cross-examination and the manner in which she gave that evidence. I do not accept that Mrs Sarkis gave truthful evidence as to how it was that she arrived at a shortlist of potential company names for Mr Sarkis’s company. I make that finding for the reasons which I set out below.

302    First, Mrs Sarkis’s affidavit sworn 25 July 2019, contains precise accounts of conversations which took place in September and October 2006 with her now husband, Mr Sarkis. The detailed accounts given in Mrs Sarkis’s affidavit stand in stark contrast to Mrs Sarkis’s poor recollection of events when pressed on matters during cross-examination. Mrs Sarkis, when asked questions which required an answer to explain how she arrived at the particular names on the shortlist other than “Henley”, would say in answer that she did not remember. That stands in sharp contrast to the detailed account in her evidence of how the name “Henley” came to be on the shortlist.

303    Set out below is annexure “VS-1” to Mrs Sarkis’s affidavit which is her handwritten shortlist of potential company names.

304    When asked whether she conducted internet searches to come up with the potential names, Mrs Sarkis said she remembered having a “dicthesaurus” and looking up some words (a “dicthesaurus” being half a dictionary and half a thesaurus in one compilation). When taken to the shortlist in annexure “VS-1” of her affidavit, and when asked whether the word “Denoble” was in the dicthesaurus, Mrs Sarkis’s response was that she could not remember. When asked, “Do you recall Bel being in the dicthesaurus with one ‘l’?”, Mrs Sarkis’s response was “I don’t remember, no”. When counsel asked Mrs Sarkis where the name “Bel” with one l came from, Mrs Sarkis said, “I actually can’t remember”. When counsel asked Mrs Sarkis, “Where did the name “Belcorp” come from?”, Mrs Sarkis’s answer was, “I don’t remember that either”. When counsel asked, “Where did the name “Meridian” come from?”, Mrs Sarkis’s response was, “I don’t remember that”. Counsel asked, “Do you remember where Walford came from?”, Mrs Sarkis’s answer was “No, I don’t”.

305    Mrs Sarkis agreed with counsel that in the shortlist (shown above) the “D’s” meant “Developments” and the “C’s” meant “Constructions”. Mrs Sarkis accepted that the search for Belcorp Developments and Belcorp Constructions was an ASIC search which she undertook. When it was put by counsel that Belcorp was not a natural English name, Mrs Sarkis’s response was “I don’t know”. When counsel put that Belcorp looks like a shortened version of Bel Corporation, Mrs Sarkis answered:[i]t doesn’t sound like an English word, but I don’t know where I got it from”.

306    The following exchange then took place between counsel and Mrs Sarkis:

… Can I say, when you searched on ASIC for Belcorp, you saw that Belcorp Holdings was taken but not Belcorp Constructions or Belcorp Developments, so that went on your list?---I don’t remember seeing Belcorp Holdings. I just remember typing up what I was looking for and seeing if they were available.

So just the precise names themselves?---Yes.

… I put it to you that from your research in 2006 – I want you to put your mind back to 2006 when you were coming up with the name Belcorp – you discovered that Belcorp was a building and construction maintenance company based in Sydney, and you liked the name and you put it on your list?---No.

No. Well, where did you come up with Belcorp from?---I can’t remember.

May I put it to you that you decided to keep that on your list even though you knew that Belcorp was the name of a building construction company in Australia because you found that Belcorp Developments and Belcorp Constructions were available on an ASIC search. Is that what happened?---I would have searched for Belcorp Development and Belcorp Constructions, and if they were available, yes, I would have wrote it down, as I - - -

And I put it to you that it went on your list because you were aware of a company called Belcorp that was a construction company in Australia in Sydney at the time?---No.

You can’t remember or no?---No. Because if it was then I wouldn’t have put it down.

307    I reject Mrs Sarkis’s denial that she was unaware of a company called Belcorp that was a building and construction maintenance company based in Sydney. I find that, in September or October 2006, Mrs Sarkis, through internet and ASIC searches, had ascertained that there existed in Sydney a building and construction maintenance company named Belcorp Holdings. I find that Mrs Sarkis searched the ASIC register and found that Belcorp Developments and Belcorp Constructions were available to be registered with ASIC.

308    Counsel in cross-examination asked Mrs Sarkis how the name “Cordell” came to be on the shortlist. The following exchange occurred between counsel and Mrs Sarkis:

In your research for suitable names you came across the name Cordell Products being used in relation to building construction; that’s right, isn’t it?---No.

… And I want to put it to you that when you were trying to come up with names for building construction companies or the like, you looked on Google about construction, and you found a website like this, or this website, which described Cordell Products being used by Reed Construction Data. Do you recall doing that?---No. I’ve never seen that website before.

You conducted a search for Cordell Constructions on ASIC and found the name Cordell Construction Information Services Proprietary Limited. Do you recall doing that?---No.

No. Do you accept that, at that time, if you had put in Cordell Constructions in ASIC it would have come up with the name Cordell Construction Information Services Proprietary Limited if that had been there at that time?---Sorry. Can you repeat that?

Is it the case that when you put in Cordell Constructions in ASIC - - -?---Yes.

Yes. Do you recall there being any other Cordell like names that [c]ame up on the ASIC search?---No. If there was a similar name I wouldn’t have wrote it down.

Yes. Well, I put it to you that there was a name, Cordell Construction Information Services Proprietary Limited, at that time. So I put it to you you must have seen Cordell Construction Information Services Proprietary Limited when you did that ASIC search. Do you accept that?---To my knowledge, I can’t remember seeing that. So I kind of really don’t remember.

Well, I put it to you that you saw that name, but because Cordell Constructions and Cordell Developments were not specifically listed on ASIC they went on your list because you liked the name Cordell?---I did like the name Cordell, but I would have only put them if they were available.

And they were available, because on the ASIC search Cordell Constructions Proprietary Limited and Cordell Developments Proprietary Limited were not used by any other company. That’s why it went on the list, yes?---Yes.

309    I do not accept Mrs Sarkis’s denial that she did not undertake a Google search of building and construction companies and that was how the name “Cordell” came to be on the shortlist. I find that Mrs Sarkis did undertake a Google search and came across the Cordell Products website. I find that Mrs Sarkis conducted an ASIC search and found the name Cordell Construction Information Services Proprietary Limited. Mrs Sarkis could not remember seeing Cordell Construction Information Services Proprietary Limited when she conducted an ASIC search. I find that “Cordell D’s/C’s” came to be on the shortlist as a result of Mrs Sarkis conducting a Google search, and then a subsequent ASIC search, to ascertain that the names “Cordell Developments” and “Cordell Constructions” were available names to be registered with ASIC.

310    The following exchange occurred between counsel and Mrs Sarkis when counsel was asking Mrs Sarkis how the name “Meridian C’s” came to be on the shortlist.

Meridian Constructions: why has the name here only constructions, not developments?---Because there might have been Meridian Development.

Might have been, or you – are you just guessing there?---As far as I can remember, that’s why I wouldn’t have put it.

Yes. So your memory is that there might have been a Meridian Developments, and so, therefore, you thought, “Well, Meridian Constructions is available,” so that went on the list?---Yes.

Right. Did you do any research to see what Meridian Developments was?---No. Because I can’t remember.

Don’t you think if you had seen … Meridian Developments when you [completed] your ASIC search, that that would have meant that there could be a confusion between Meridian Developments and a company called Meridian Constructions for what will become Australia’s biggest builder?---Sorry. Can you repeat that?

… When you decided to put Meridian Constructions down on this list, yes, and you’ve said that it’s likely that you chose Meridian Constructions but not Meridian Developments because Meridian Developments came up in one of your searches, yes – are you with me so far?---Yes.

Yes. When you did that, I put it to you shouldn’t you have also thought that if Patrick Sarkis was to use Meridian Constructions and there was a company already out there called Meridian Developments, that would cause problems and confusion in the market?---I can’t remember seeing that, but I didn’t think that if there was. But I don’t remember.

311    A further exchange occurred between counsel and Mrs Sarkis regarding the name “Meridian”:

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[ed] 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 … 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.

Yes …You see that. Do you agree that you would have seen this website back in 2006 when you were coming up with these names?---No.

(Emphasis added.)

312    I find that in September or October 2006, Mrs Sarkis undertook a Google search and visited the website of Meridian Construction Services. I find that Mrs Sarkis then searched the ASIC register and found the name “Meridian Constructions” was available to register and that is how “Meridian C’s” came to be a name on the shortlist.

313    The following exchange occurred between counsel and Mrs Sarkis when counsel was asking Mrs Sarkis questions as to how “Bel” came to be a name on the shortlist.

We’ve talked about Bel Constructions before … Do you accept that the word Bel without an L is a rather strange spelling of the word Bel?---I wouldn’t say strange. It’s different to the normal Bell.

Yes. And you don’t know where you got – came up with that word, Bel without an extra L?---No.

I put it to you that you did some searching on the internet relating to construction companies and you came across this website talking about Bel Contracting. Do you see that?---I can see that.

Yes. I put it to you that you came across this website back in 2006?---No, I’ve never seen that website.

Okay. I put it to you that you came across the idea or you came across the – that you came to the view of using Belcorp or Bel Constructions – Belcorp Constructions or Bel Constructions because you had heard of a company called Belcorp or Bel and you thought it was a good name?---No.

And then you did an ASIC search and you found that Bel Constructions and Bel Developments was available – sorry, Bel Constructions was available, and you put it on your list. You see here that Bel Developments is not on your list?---Yes, I can see that.

And is that the same answer you gave as Meridian, that when you searched on ASIC, you came across something – likely came across something that was Bel Developments, and you decided that that should not be on your list?---Yes.

And you would agree with me, wouldn’t you, that a company wanting to become Australia’s biggest builder, choosing the name Bel Constructions, it would have been sensible to find out what Bel Developments did?---Sorry, can you just repeat that.

Did you make any attempt to find out what Bel Developments, which you think you might have found on an ASIC search – what Bel Developments did?---No.

314    I do not accept Mrs Sarkis’s denial that, in 2006, she did not conduct an internet search and visit the website of Bel Contracting. I do not accept Mrs Sarkis’s evidence that she has never seen the Bel Contracting website. I find that the name “Bel” came to be on the shortlist as a result of Mrs Sarkis undertaking internet searches and visiting the website of Bel Contracting and Belcorp. In this respect, annexure “JML-34” to the Second Lawrence Affidavit shows a website for Belcorp Services (www.belcorp.com.au) as at 3 December 2014. That website states that “Belcorp Services is a family owned, Sydney-based maintenance and construction company … [s]tarted in 2005 by Glenn Bell”. I find that Mrs Sarkis came across the names “Bel” and “Belcorp” after conducting internet searches, and then undertook ASIC searches, to see if the names “Bel” and “Belcorp” were available for registration.

315    Counsel asked Mrs Sarkis how the name “Denoble” came to be on the shortlist:

What about the name Denoble? Did you, in your research relating to building companies, come across a Canadian company called Denoble Homes?---No.

316    I do not accept this denial by Mrs Sarkis. I find that Mrs Sarkis came across the company called “Denoble Homes” when undertaking internet searches and that was how the name “Denoble” came to be on the shortlist.

317    Counsel also asked Mrs Sarkis about the name “Walford Homes”: “Walford Homes? Did you come across that?---No”. I do not accept this denial by Mrs Sarkis. I find that Mrs Sarkis came across the company “Walford Homes” when undertaking internet searches and that was how the name “Walford” came to be on the shortlist.

318    Counsel cross-examined Mrs Sarkis on how it was that the name “Henley” came to be on the shortlist. Mrs Sarkis gave the following evidence:

You knew in 2006, when putting this list together, that just because the name Henley Constructions was available in an ASIC search, that didn’t mean that the name Henley was not being used for another building and construction company, for example, Henley Properties. You knew that, didn’t you? Let me put it – I will rephrase. You knew that just because Henley Constructions was available on an ASIC search didn’t mean that, for example, Henley Properties was available?--- Well, I never searched Henley Properties, so I wouldn’t have known.

No. I put it to you that in your searches about finding building companies or – sorry – in your searches to find a building company name, you came across Henley Properties and the henley.com.au website. Do you agree with that?---No.

When putting this list together, do you think it’s reasonable, as at the time you were putting this list together, to do a search on Google for the word “Henley” and see what came up?---Sorry, can you repeat that.

When you’re putting this list together for Patrick [Sarkis], you’re putting a list together for company names for what will be Australia’s biggest building company; yes?---Yes.

Yes. And I put it to you that, acting reasonably in 2006, you would have wanted to know if any other building company was using the name Henley. Do you agree with that?---Yes. I wouldn’t have wanted him to have the same name as anyone else. That’s correct.

Yes. And a reasonable search to do to determine whether that was the case would be to search “Henley” in Google; yes?--- I don’t remember searching “Henley” on its own.

Yes. But I’m putting to you that in 2006, you would have searched for the word Henley on Google. Yes?---Not on its own. I can’t remember searching Henley on its own on Google. No.

So you would have searched in Google for Henley Constructions?---Yes.

(Emphasis added.)

319    I do not accept Mrs Sarkis’s denial that she did not come across the name Henley Properties and the henley.com.au website when searching the internet to find a building company name. Mrs Sarkis gave evidence that she conducted Google searches of the name “Henley Constructions”. Mrs Sarkis said that she did not remember conducting a Google search for the word “Henley” on its own. Mrs Sarkis said that she would have searched on Google for “Henley Constructions”. That critical fact was not deposed to in her affidavit nor viva voce evidence in chief. Mrs Sarkis said that she searched on Google for “Henley name meaning” and “Henley Constructions” but she did not recall typing the word “Henley” into Google by itself. Mrs Sarkis also denied seeing the henley.com.au website. I do not accept this evidence of Mrs Sarkis. The cross-examination below is instructive:

So if you go to page 2498 [of the Court Book, being part of annexure “LNS-6” to the affidavit of Lance Newman Scott affirmed 9 May 2019], this is a search here, a particular search, but it’s a search for any website which has the word Henley in it, [and] any website which has the word homes or building or marketing. Do you see that?---I do. Yes.

Yes. And obviously, homes and marketing are not very aligned to the word constructions, but you agree that building is aligned to the word constructions?---Yes. I agree. It’s similar. Yes.

Yes. And I put to you that if you have put in a search for Henley Constructions, you would have got a result very similar to what we see at [page] 2499 [of the Court Book], which is at the second position. This is a worldwide search:

Display home Victoria Henley home Henley Properties Group.

And I put it to you that’s exactly what happened in November 2006. Do you agree with that?---Sorry. Can you repeat that question?

I put it to you that in November 2006, you would have seen a search result like this when searching for Henley Constructions. I put it to you you did get a search result similar to this when you searched for Henley Constructions on Google, which came up with the second link, which is – there’s a yellow highlight on part of it:

Display home Victoria Henley home Henley Properties Group Victoria.

You see that?---Yes. I can see that. Yes.

And I put it to you when you put together this list, you saw that on Google searching?--- No, because I don’t remember ever seeing that.

And I put to you that you clicked on that link and you went to a website which looks very much like the website at page 2506 [of the Court Book]?---I’m just going there now.

Yes?--- I’ve never seen that.

I put to you that you thought that Henley was a good name, but you knew that Henley was being used, for example, as Henley Properties Group on this website. So you did an ASIC search, saw that Henley Developments and Henley Constructions Proprietary Limited were not in use, and so you put in on your list; you agree with that?---No.

320    I find on the evidence that Mrs Sarkis, when she conducted a Google search in 2006 for the name “Henley Constructions”, would have seen the second position listing of the Henley Properties Group’s website. I find that, at the relevant time in 2006, Mrs Sarkis found the website www.henley.com.au and knew that the name “Henley” was being used by Henley Properties Group who operated a business in Victoria, South Australia and Queensland in respect of building and constructing homes. I find that Mrs Sarkis then conducted an ASIC search and saw that the names “Henley Developments” and “Henley Constructions” were available to be registered. Mrs Sarkis then put the name “Henley D’s/C’s” on the shortlist.

321    Mrs Sarkis gave the following evidence in cross-examination when asked did she tell Mr Sarkis how she came up with the name “Henley”:

Now, how did you come up with the name – how did you tell Patrick [Sarkis] that you had come up with the name Henley?--- Because I had told him that I had seen it on a show – a reality TV show, and the younger sister’s name was Henley.

Well, I put it to you that if you had done a search – as I have put it to you, if you had have done a search on Henley in Google and found the Henley Properties website, that you also would have told him, if you were telling him these things, that you had seen the Henley Properties website; do you agree with that?--- No, because I didn’t – I don’t recall typing in “Henley” on its own.

Yes, but I’m putting to you if you had the Henley Properties website, you would have told Mr Patrick Sarkis about it, wouldn’t you?---If I had seen it, I probably would have, but I hadn’t. I didn’t see it.

322    At [22] of her affidavit, Mrs Sarkis deposed that she explained to Mr Sarkis how she had come up with the name and told him words to the effect of “I also checked on the ASIC website for you to see if the name was available and it is”.

323    I find that Mrs Sarkis conducted a Google search in 2006 and found the Henley Properties Group website, www.henley.com.au, and told Mr Sarkis about the Henley Properties Group website. Mrs Sarkis conceded in cross-examination that she did search Henley Constructions in Google, and Google searches conducted in 2006 show that a Google search of “Henley” with any of “homes”, “building” or “marketing” retrieved the www.henley.com.au website as the second listed search result. In these circumstances, it should be inferred that, when Mrs Sarkis searched “Henley Constructions” in 2006 (which Mrs Sarkis has conceded she did in fact do), Mrs Sarkis came across the Henley Properties Group website.

324    The above evidence of Mrs Sarkis informing Mr Sarkis how she came up with the name was also inconsistent with the following evidence she gave:

So when you said you and Patrick 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 an ASIC search?--- Yes.

(Emphasis added.)

325    All of the above evidence supports the inference, and I find, that Mrs Sarkis in 2006 conducted Google searches of names already in use in the construction industry and then assessed if adding the words “Developments” or “Constructions” to them meant they were available names to register as company names with ASIC.

326    There are further inconsistencies in the evidence of Mrs Sarkis as to how she came to put the name “Henley” on the shortlist. Mr Sarkis’s evidence is that Mrs Sarkis came up with the name “Henley”. Mrs Sarkis’s evidence is that she first heard the name when watching an American reality show and a participant’s younger sister was named “Henley” on that show. Mrs Sarkis’s evidence was that she undertook a Google search of “Henley name meaning”, the results of which stated that the name “Henley” was of English origin and meant “high meadow”. Mrs Sarkis’s evidence was that she immediately fell in love with the name. That evidence of Mrs Sarkis is inconsistent with the Amended Defence of Henley Constructions filed in the proceeding. The particulars to [30] of Henley Constructions’ Amended Defence state that the “Henley” name was selected due to Mr Sarkis’s fondness for the boy’s name Henley, and his intention to call his future son “Henley Joseph Sarkis”. Mr Lance Scott, the respondents’ solicitor, confirmed in cross-examination, that he had received instructions from Mr Sarkis in respect of this aspect of Henley Constructions’ Amended Defence. However, in cross-examination, Mr Sarkis said he gave no such instructions. These discrepancies between the evidence of Mrs Sarkis as to how she came up with the name “Henley” and the pleaded defence were unexplained by Mrs Sarkis and Mr Sarkis during their evidence. The discrepancies between the evidence of Mr Sarkis and Mr Scott were also unexplained.

327    Mrs Sarkis, during cross-examination, explained that she conducted specific searches of the ASIC register for potential names and explained that, where she identified that there was an existing company registered as “Developments” (as was the case for the Meridian and Bel names), she only wrote “C’s” on her shortlist as opposed to “C’s/D’s” for names where both “Constructions” and “Developments” were available. The evidence is, and I find, that seven out of the eight names, including Henley, on Mrs Sarkis’s shortlist of prospective business names, were already used by other businesses in the building and construction industry as of December 2006. In cross-examination, Mrs Sarkis could not recall why any of the other names on the list had been selected. This is telling, and is in stark contrast, to Mrs Sarkis’s definitive recollection of how she arrived at the selection of the name “Henley”. The evidence is that internet searches of the names on the shortlist would have identified existing businesses in the building and construction industry. Comparisons between Mrs Sarkis’s shortlist and existing businesses and their websites at December 2006 are set out in the Second Lawrence Affidavit at [11] and [12] and in the table below.

Mrs Sarkis Note (Shortlist)

Existing businesses (Second Lawrence Affidavit at [11]-[12])

Belcorp D’s/C’s

Belcorp Services (belcorp.com.au)

Cordell D’s/C’s

Cordell Building Information Services (cordell.com.au and reedconstructiondata.com.au)

Meridian C’s

Meridian Constructions Services (meridianconstructions.com.au)

Bel C’s

BEL Contracting (belcontracting.com.au)

Denoble D’s/C’s

DeNoble Homes (denoblehomes.com)

328    I find that Mrs Sarkis found these websites in 2006, and that is how these names came to be on Mrs Sarkis’s shortlist.

329    Mrs Sarkis’s evidence is that she told Mr Sarkis she had searched the ASIC register, prepared the list and then gave it to Mr Sarkis. Mrs Sarkis’s evidence was that, if she had seen the Henley Properties Group website, she “probably would have” told Mr Sarkis about it. In light of the finding I have made that Mrs Sarkis did, in fact, review the Henley Properties Group website at the relevant time in 2006, I find that Mrs Sarkis told Mr Sarkis about that website, Mr and Mrs Sarkis knew of the Henley Properties Group, knew of the website ww.henley.com.au, knew that Henley Arch was an existing business operating in Victoria, South Australia and Queensland in respect of the building and construction of homes and proceeded to register the name “Henley Constructions” notwithstanding that those names were likely to mislead or deceive consumers into thinking that there was a connection or association between (a) Henley Arch, the Henley Properties Group and the website henley.com.au and (b) Henley Constructions.

Mr Sarkis’s evidence

330    Mr Sarkis accepted in cross-examination that he wanted to be the biggest builder in Australia and that it would be reasonable for someone in that position to search for information on their competitors. Mr Sarkis said that, in the period August, September and October 2006, he did not conduct any research of competitors.

331    Mr Sarkis said in cross-examination that Mrs Sarkis had come up with potential names for his construction company. Mr Sarkis said that Mrs Sarkis came up with the name “Henley” and Mrs Sarkis then wrote “Henley C’s and D’s” on a piece of paper. Mr Sarkis said that it was Mrs Sarkis who came up with the names on the list and that he had no input.

332    Mr Sarkis agreed in cross-examination 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, would have conducted Google searches of each of the names on the list. Notwithstanding, Mr Sarkis’s evidence was that he did not conduct any such searches.

333    Mr Sarkis’s evidence was that he engaged Mr Murabak, his accountant, to “double check” the ASIC name searches conducted by Mrs Sarkis. I find that Mr Murabak was instructed to carry out an ASIC search but no searches beyond that to determine the suitability of the name Henley Constructions.

334    I find that Mr Sarkis did not seek legal advice from his solicitor, Mr Tsavdaridis, regarding use of the name Henley Constructions. I find that Mr Tsavdaridis was simply asked which name on the list he recommended to which he replied “Henley Constructions”.

335    In Drill on behalf of the Purnululu Native Title Claim Group v State of Western Australia [2020] FCA 1510, Mortimer J stated at [524]:

In Sagacious Legal Pty Ltd v Wesfarmers General Insurance Ltd [2011] FCAFC 53 at [79], the Full Court explained the correct approach to [Jones v Dunkel (1959) 101 CLR 298 (Jones v Dunkel)] in the following way:

But the fact that one can infer that a party was afraid to call some particular witness or tender some particular document can take a trier of fact only so far. It is accepted that where a party fails, without explanation, to call a witness who that party might have been expected to call and whose evidence might have elucidated the matter in dispute, then the inference may be drawn that the evidence of the absent witness would not have assisted the party that failed to call that witness: Jones v Dunkel at 308, 312 and 320-321. By itself that inference is frequently somewhat barren, for knowing that the evidence of a witness would not have assisted tells one nothing about what the witness’s evidence affirmatively would have been. Often more directly useful is the allied principle that in such a case the trier of fact may more confidently draw any inference unfavourable to the party that failed to call that witness if that witness appears to be in a position to cast light on whether the inference should be drawn: Jones v Dunkel at 308 per Kitto J, 312 per Menzies J, and 320-321 per Windeyer J. Neither inference is mandatory and, generally speaking, these inferences only become material where the balance of the evidentiary record is equivocal.

336    I find that Mr Murabak and Mr Tsavdaridis were both available to give evidence in this proceeding but were not called by the respondents. I find, pursuant to the rule in Jones v Dunkel [1959] HCA 8; 191 CLR 298 (Jones v Dunkel), that an inference can be drawn from the failure to call Mr Murabak and Mr Tsavdaridis that their evidence would not have been of assistance to the respondents’ case. In these circumstances, an inference can be drawn that Mr Murabak and Mr Tsavdaridis would not have given evidence which supported relevant searches having been undertaken by the respondents in relation to the adoption of the Henley Constructions name.

337    Particular “b” to [32] of the Amended Defence of Henley Constructions, and Mr Sarkis’s evidence in cross-examination, was that Mr Sarkis tested the name “Henley” with a Mr Gavin Napier and queried if he had ever heard of any other companies using a similar name. Mr Sarkis’s evidence in cross-examination was that Mr Napier told him that he recalled a Sydney building company called “Henley Constructions” which was similar and that it went into administration prior to 2006. Mr Sarkis’s three affidavits in this proceeding do not depose to the conversation with Mr Napier. Mr Sarkis said in cross-examination that he could not recall whether he told Mr Murabak or Mr Tsavdaridis of his conversation with Mr Napier.

338    Mr Sarkis accepted that his affidavits do not refer to his conversation with Mr Napier. Mr Sarkis accepted that Mr Napier was available to give evidence but had not been called. I find, pursuant to the rule in Jones v Dunkel, that an inference may be drawn that the failure to call Mr Napier was because his evidence would not have assisted the respondents’ case.

339    In light of the findings made above, I find that, by December 2006, Mr Sarkis had knowledge of the business of Henley Arch and its use of the names Henley Properties Group and Henley. Mr Sarkis had that knowledge because Mrs Sarkis had informed him that she had conducted Google searches and ascertained the existence of Henley Arch’s website www.henley.com.au and the use of the names Henley Properties Group and Henley. I find that Mr Sarkis had knowledge of Henley Arch’s use of Henley Properties Group and Henley prior to the incorporation of Henley Constructions Pty Ltd on 13 December 2006 and had been informed by Mrs Sarkis that the names “Henley Constructions” and “Henley Developments” were available to be registered on the ASIC register. I find Mr Sarkis, with that knowledge, had Mr Murabak obtain registration of both those names for the benefit of the first respondent.

340    In light of Mr Sarkis’s evidence, it is not clear whether Mr Sarkis was put on notice by his conversation with Mr Napier prior to, or after incorporation of, the first respondent on 13 December 2006, that there was a company in Sydney that had used the name “Henley Constructions”. In any event, after receiving that notice, Mr Sarkis failed to make any further enquiries and that fell short of what could reasonably be considered to be the enquiries one would make if acting honestly and in good faith.

Findings on Henley Constructions’ conduct after receipt of letter of demand

341    On 13 April 2017, Henley Arch sent a letter of demand to Henley Constructions which was answered by Henley Constructions’ solicitors, HP Legal, on 10 May 2017. It was an agreed fact between the parties that from 4 February 2017, and at the time of the HP Legal letter, Henley Constructions was using the second logo which appeared in the HP Legal letter as follows:

342    I find on the evidence that, after receipt of the 13 April 2017 letter of demand, Henley Constructions’ trade mark use “ramped up” and intensified.

343    By way of example, Exhibit A20 was the Instagram page of Henley Constructions. 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 in cross-examination that this by Henley Constructions signage was implemented after April 2017.

344    In addition, Exhibit A19 provides extracts from Henley Constructions’ Facebook page. That Facebook page included the following:

345    This post is dated 15 February 2018, and this logo did not appear in HP Legal’s 10 May 2017 letter to Henley Arch. I therefore find that this logo was adopted by Henley Constructions sometime after 10 May 2017 and before 15 February 2018 when it was posted on Henley Constructions’ Facebook page. In this new 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:

346    I find that Mr Sarkis approved the use and implementation of the above logo (third Henley Constructions logo) (with the more prominent use of “Henley” (shown above)), but otherwise left the marketing strategy and the use to which the third Henley Constructions logo was put to his marketing team which included his brother, Mr Jason Sarkis. No evidence was adduced from Henley Constructions’ marketing personnel, despite Mr Sarkis’s evidence that his brother, Mr Jason Sarkis, was available to give evidence and would be better equipped to give evidence about Henley Constructions’ marketing activities. This is demonstrated by the following cross-examination:

Do you know you have a Facebook page?---Yes.

And who does your Facebook page?---That would be Jason, John or Natalie.

Jason Sarkis?---Sarkis, John Nasr or Natalie Payet.

You just said you have no knowledge about marketing. No knowledge about posting. No knowledge about all of these things. I’m just asking you, because you have given some evidence about how Henley Constructions markets itself. Was there somebody else who could have given this evidence? Mr Joseph Sarkis, maybe? Apart from - - -?---My father?

Sorry. Your brother Jason Sarkis? … Would he have been able to give evidence about marketing for Henley Constructions?---Jason?

He would have been better equipped to answer some of these questions about your website and your Facebook and your LinkedIn etcetera? You accept that?---Yes.

(See Transcript, pp 313 and 323.)

347    I find that the failure to call Jason Sarkis or any other marketing personnel to explain the change to the third Henley Constructions logo and the marketing strategy implemented, gives rise to an inference pursuant to the rule in Jones v Dunkel, that the persons not called could not have given evidence that would have assisted Henley Constructions’ case, and that the evidence would not have supported an innocent rationale for the change in the logo. I am satisfied, and find, that the change in the logo to the third Henley Constructions logo, accentuating the word “Henley” and significantly reducing the size and prominence of the word “Constructions”, was in reckless disregard of the fact that the change to the logo would increase actual or potential confusion.

348    I find that Henley Constructions used the third Henley Constructions logo by affixing it to buildings that it constructed, on construction signage, on construction cranes, on social media pages, on vehicles, on clothing and on sporting sponsorship activities.

349    In light of the findings made above, I find that the use of the third Henley Constructions logo, from the time of its adoption sometime after 10 May 2017 (being the date of Henley Constructions’ reply to Henley Arch’s letter of demand), and all uses of the mark “Henley Constructions” after that date, was not in good faith.

350    Mr Sarkis gave no evidence that he had an honest belief that there would be no confusion as a result of the use of the third Henley Constructions logo or any of the HENLEY CONSTRUCTIONS marks. I find that Mr Sarkis did not have an honest belief that there would be no confusion as a result of the use of the third Henley Constructions logo or any of the other HENLEY CONSTRUCTIONS marks. I find that Mr Sarkis and Henley Constructions did not act in good faith in using its own name either prior to receipt of the letter of demand from Henley Arch on 13 April 2017 or after that date.

351    I make further findings below where they are relevant to each aspect of Henley Arch’s claims and Henley Constructions’ defences or cross-claims.

TRADE MARK INFRINGEMENT

Henley Arch’s submissions

The marks in issue

352    Henley Arch contends that Henley Constructions has infringed its trade mark rights pursuant to s 120(1) of the TMA. Henley Arch submits that this conduct has taken place with respect to each of the Henley Constructions signs that are set out in Henley Arch’s Amended Further and Better Particulars to paragraph 11 of the Statement of Claim (Particulars Table).

353    The Particulars Table includes the signs used by Henley Constructions, the dates of use, instances of use and the services in respect of which the signs are said to have been used.

354    In addition to the marks set out below in the Particulars Table, Henley Arch has also submitted that the use of the sign “Henley” (or “Henley” solus), which Henley Arch submits is a name with which Henley Constructions has promoted itself, has also infringed all of its trade marks. For simplicity, any reference to the signs in the “Particulars Table” will also include this sign.

Ref

Dates of use

Instances of use

Services

Evidence reference

A.

(first Henley Constructions logo)                

A.1

November 2009 to about February 2015

On website at www.henleyconstructions.com.au (the Henley Constructions Website)

Building and construction services for “small interior renovations” up to “large apartment blocks” with depictions of terraces, townhouses, two and three storey multi-dwelling residential apartment blocks and commercial buildings

JML-13 Tender Bundle: 1555-1560 [Henley Constructions admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]

Ex A18

A.2

Early 2009 to February 2016

On signage at least at the following locations and times:

Early 2009 at 4-6 Marlborough Road, Homebush West, New South Wales;

(a)    Early to mid-2012 at 15-17 Larkin Street, Camperdown, New South Wales;

(b)    Around March 2015 at 456-458 Gardeners Road, Alexandria, New South Wales;

(c)    February 2016 at 59-65 Chester Avenue, Maroubra, New South Wales.

Building and construction services in respect of a three to five storey multi-dwelling apartment block at the sites it was displayed

JML-10 Tender Bundle: 1525

JML-44 Tender Bundle: 2055

Ex R22

(also at HQ building on door – JML-10 Tender Bundle: 1525-1526)

B.

“henleyconstructions.com.au” (Henley domain name)

B.1

November 2009 to about February 2015

On Henley Constructions Website

Building and construction services for “small interior renovations” up to “large apartment blocks” with depictions of terraces, townhouses, two and three storey multi-dwelling residential apartment blocks and commercial buildings

Admitted facts paragraph 7 Notice of Dispute Tender Bundle: 86, Ex A14

JML-13 Tender Bundle: 1555-1560 [Henley Constructions admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]

Ex A18

B.2

Early 2009 to February 2016

On signage at least at the following locations and times:

•  Early 2009 at 4-6 Marlborough Road, Homebush West, New South Wales;

  Early to mid-2012 at 15-17 Larkin Street, Camperdown, New South Wales;

  Around March 2015 at 456-458 Gardeners Road, Alexandria, New South Wales;

  February 2016 at 59-65 Chester Avenue, Maroubra, New South Wales.

Building and construction services in respect of a three to five storey multi-dwelling apartment block at the sites it was displayed

Ex R22

JML-44 Tender Bundle: 2055

B.3

February 2017 – August 2018

On Henley Constructions Website

Building and construction services for “boutique and large-scale residential projects ranging from 10 to 500 units”

Admitted facts paragraph 7 Notice of Dispute Tender Bundle: 86, Ex A14

JML-13 Tender Bundle: 1561-1581 [admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]

JML-14 – Henley Constructions Website at 27/2/17 [admitted accurately depict, in response to paragraph 36 of the First Notice to Admit, see paragraph 10 Notice of Dispute Tender Bundle: 86, Ex A14]

Ex A18

B.4

Since August 2017

On business cards

Building or construction services in respect of single dwellings and multi-dwelling low rise and medium rise multi-storey apartment blocks

Business cards Tender Bundle: 1532 [Business cards - admitted appearance paragraphs 4, 5 Notice of Dispute Tender Bundle: 86, Ex A14]

B.5

From about July 2018

On Instagram

Building and construction services in respect of residential and commercial projects

Ex A20

B.6

Since at least 15 February 2018

On Facebook

Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks

Ex A19

JML-91

C

(second Henley Constructions logo)

C.1

February 2017 – August 2018

On Henley Constructions Website

Building and construction services for “boutique and large-scale residential projects ranging from 10 to 500 units”

JML-13 Tender Bundle: 1561-1581 [admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]

JML-14 – Henley Constructions Website at 27/2/17 [admitted accurately depict, in response to paragraph 36 of the First Notice to Admit, see paragraph 10 Notice of Dispute Tender Bundle: 86, Ex A14]

Ex A18

C.2

Since the latest August 2017

On a brochure provided to the public in respect of the Aperture Apartments, Marrickville (or authorised such use)

Building and construction services in respect of a multi-dwelling apartment block

JML-10 Tender Bundle: 1530 [admitted accurately depict, in response to First Notice to Admit, see paragraph 6 Notice of Dispute Tender Bundle: 86, Ex A14]

PS-10

C.3

From October 2018

At the website at www.aperturemarrickville.com.au (or authorised such use)

Building and construction services in respect of apartments at the “Aperture at Marrickville” construction project

PS-7 Tender Bundle: 4088, 4089

D

HENLEY CONSTRUCTIONS

D.1

Around 28 March 2017

Advertisement in Inner West Courier Newspaper

Building and construction services for “high-quality residential projects” and a multi-dwelling apartment block

Advertisements annexed to Amended Defence at Tender Bundle: 4908, 4909 – and see admitted facts paragraph 12 Notice of Dispute Tender Bundle: 86, Ex A14

PS-10, Tender Bundle: 4131, 4132

D.2

Since at least 15 February 2018

On Facebook

Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks

Ex A19

JML-91

Ex A20 and PS-9 (Instagram)

D.3

From October 2018

At the websites (or authorised such use):

  www.aperturemarrickville.com.au

  at www.thebirdwood.com.au

  www.libertysutherland.com.au

   from July 2019, www.quartierdrummoyne.com.au

Building and construction services in respect of apartments at the specified construction project

PS-7 Tender Bundle: 4088, 4093, 4099, 4104

PS-10

D.4

From the latest February 2019 (but no earlier than 2 May 2018)

At its website at the domain name www.henleygallery.com.au

Building and construction services in respect for residential projects and the multi-dwelling apartment block at the “Aperture Apartments” construction project

JML-59

D.5

Since at least prior to 25 July 2019

Generally and for friends, including for Ali Hassan at the property at 23 The Grand Parade, Brighton-Le Sands, New South Wales 2216, including by display on hoarding at that site

Building and construction services in respect of single dwelling structural alterations, single dwelling non-structural renovations, construction of new duplexes, and construction of new single dwellings

JML-90 Tender Bundle: 5798, 5799

E

HENLEY

E.1

February 2017 – August 2018

On Henley Constructions Website (including vertical image of HENLEY sign at ground level of a building)

Building and construction services for “boutique and large-scale residential projects ranging from 10 to 500 units”

JML-13 Tender Bundle: 1558, 1569, 1570, 1575, 1580 [admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]

JML-14 – Henley Constructions Website at 27/2/17 Tender Bundle: 1585, 1586, 1590 [admitted accurately depict, in response to paragraph 36 of the First Notice to Admit, see paragraph 10 Notice of Dispute Tender Bundle: 86, Ex A14]

(before Feb 2017, see A18 page 2)

On Henley gallery website at JML-59 Tender Bundle: 2148, 2151

E.2

Around 28 March 2017

Advertisement in Inner West Courier Newspaper

Building and construction services for “high-quality residential projects” and a multi-dwelling apartment block

PS-10

E.3

Since around mid 2017

On the number plate of utes decorated with decals showing the third Henley Constructions logo (that have been parked at or in front of building and construction sites), including in the form HENLEY and H3NL3Y

Building or construction services in respect of single dwellings and multi-dwelling apartment blocks

PS-9 Tender Bundle: 4117 (Instagram image of “Fleet of vehicles” showing decal)

P Sarkis XXN T.321.23-34

E.4

From at least September 2018

At ground level on the front of the building and (up to a time before September 2019) at 128 Parramatta Road, Camperdown, New South Wales [when used in conjunction with THE HENLEY DISPLAY GALLERY and the third Henley Constructions logo]

Building and construction services for an apartment block called “Aperture” or “Marrickville Luxury Apartments”

JML-46

E.5

From October 2018

At the website at www.aperturemarrickville.com.au (or authorised such use)

Building and construction services in respect of apartments at the “Aperture at Marrickville” construction project

PS-7 Tender Bundle: 4088

E.6

From October 2018

At the website at www.thebirdwood.com.au (or authorised such use)

Building and construction services in respect of multi-dwelling apartment block at the “Birdwood” construction project

PS-7 Tender Bundle: 4093

F

1300 HENLEY

F.1

February 2017 – August 2018

On Henley Constructions Website

Building and construction services for “boutique and large-scale residential projects ranging from 10 to 500 units”

JML-13 Tender Bundle: 1566-1568, 1570, 1574, 1577, 1579 [admitted accurately depict, in response to paragraph 35 of the First Notice to Admit, see paragraph 9 Notice of Dispute Tender Bundle: 86, Ex A14]

JML-14 – Henley Constructions Website at 27/2/17, Tender Bundle: 1583, 1584, 1587, 1589, 1590, 1593, 1594 [admitted accurately depict, in response to paragraph 36 of the First Notice to Admit, see paragraph 10 Notice of Dispute Tender Bundle: 86, Ex A14]

F.2

Since August 2017

On business cards

Building or construction services in respect of single dwellings and multi-dwelling low rise and medium rise multi-storey apartment blocks

JML-10 use on Business cards Tender Bundle: 1532 [Admitted appearance paragraphs 4, 5 Notice of Dispute Tender Bundle: 86, Ex A14]

(also at HQ building on door – JML-10 Tender Bundle: 1525-1526)

F.3

Since at least 15 February 2018

On Facebook

Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks

Ex A19 (pages 11, 13)

JML-91 Tender Bundle: 5807

G

(third Henley Constructions logo)

G.1

After 10 May 2017

On the side of up to around 15 “ute” vehicles (that have been parked at or in front of building and construction sites)

Building or construction services in respect of single dwellings and multi-dwelling low rise and medium rise multi-storey apartment blocks

Ex R22 (page 28)

Ex A19 (page 19)

Ex A20 (page 17)

JML-17

PS-9 Tender Bundle: 4117 (Instagram image of “Fleet of vehicles” showing decal)

G.2

After 10 May 2017

On hoarding at construction sites, in email signatures, and on business cards

Building or construction services in respect of single dwellings and multi-dwelling low rise and medium rise multi-storey apartment blocks

Ex A19

Ex A20 (page 12)

Ex R4

Ex R22

JML-17

JML-47 Tender Bundle: 2080

JML-49 Tender Bundle: 2092, 2093

JML-50 Tender Bundle: 2097

JML-51 Tender Bundle: 2104

JML-10 use on Business cards Tender Bundle: 1532 [Admitted appearance paragraphs 4, 5 Notice of Dispute Tender Bundle: 86, Ex A14]

PS-9

G.3

Since around mid-2017

On signage at the following sites:

(a)    At least around June 2017, at the “Aleya” site, at 1 Sparkes Lane, Camperdown, NSW;

(b)    At least around February 2018, at 233-235 Botany Road, Waterloo, NSW;

(c)    At least from September 2018 to April 2019, at 81-83 Waterloo Road, Punchbowl, NSW;

(d)    At least around September 2020, at the “Chanel” building at 27 Church Street, Camperdown, NSW;

(e)    From at least March 2021, at the “Botany Living” site at 1445-1447 Botany Road, Botany, NSW

(f)    In around August 2017, at a construction site at 507-509 President Ave, Sutherland, NSW

(g)    In around September 2017, at the “Birdwood” construction site at 203 Birdwood Road, Georges Hall, NSW.

(h)    In around October 2017, at a construction site at 1356-1362 Botany Road, Botany.

(i)    Between at least May 2019 and February 2020, at a construction site at 9 Wrights Road, Drummoyne, New South Wales (for the “Quartier” project).

Building and construction services in respect of a multi-dwelling apartment block at each of those site (and in relation to the Punchbowl site in respect of building and construction of a multi-dwelling two storey aged care facility (St Charbel’s Care Centre) at that site).

Ex R22

Ex A19

EX R4

Ex A20 (page 12)

JML-47 Tender Bundle: 2080

JML-49 Tender Bundle: 2092, 2093

JML-50 Tender Bundle: 2097

JML-51 Tender Bundle: 2104

G.4

From at least September 2018

At ground level on the front of the building and (up to a time before September 2019) at 128 Parramatta Road, Camperdown, New South Wales

building and construction services for an apartment block called “Aperture” or “Marrickville Luxury Apartments”

JML-46 Tender Bundle: 2070, 2071

Ex A20 (page 10)

G.5

From about July 2018

On Instagram

building and construction services in respect of residential and commercial projects

Ex A20

PS-9

G.6

Since at least 15 February 2018

On Facebook

building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks

Ex A19

JML-91

G.7

From July 2019

At the website www.quartierdrummoyne.com.au (or authorised such use)

building and construction services in respect of a three storey multi-dwelling building at the “Quartier” construction project at 9 Wrights Road, Drummoyne, New South Wales

PS-7 Tender Bundle: 4105

G.8

Since at least prior to 25 July 2019

Generally and for friends, including for Ali Hassan at the property at 23 The Grand Parade, Brighton-Le Sands, New South Wales 2216, including by display on hoarding

building and construction services in respect of single dwelling structural alterations, single dwelling non-structural renovations, construction of new duplexes, and construction of new single dwellings

JML-90 Tender Bundle: 5798, 5799

G.9

From around September 2017

On completed low to medium-rise multi-dwelling apartment blocks, including at least:

(a)    From September 2017, at the “Birdwood” building, at 203 Birdwood Road, Georges Hall, New South Wales;

(b)    From August 2018, at the “Aleya” building, at 1 Sparkes Lane, Camperdown, New South Wales;

(c)    From December 2018, at 59-65 Chester Avenue, Maroubra, New South Wales;

(d)    From August 2019, at the Camperdown “HQ” building, at 128 Parramatta Road, Camperdown, New South Wales;

(e)    From March 2020, at the “Quartier” building, at 9 Wrights Road, Drummoyne, New South Wales;

(f)    From July 2020, at the “Noah” building, at Gladesville, New South Wales;

(g)    From October 2020, at the “Chanel” building, at 27 Church Street, Camperdown, New South Wales.

building and construction services

Ex R22

Ex A19

Ex R2

Ex R3

Ex R4

Ex A20 (pages 2, 3, 5, 10, 14, 15)

JML-91

PS-9 Tender Bundle: 4115

G.10

Since at least November 2019

on safety hats and hi-vis clothing

Building and construction services

Ex A19 (page 12)

Ex A20 (page 6)

H

THE HENLEY DISPLAY GALLERY

H.1

From at least September 2018

At ground level on the front of the building and (up to a time before September 2019) at 128 Parramatta Road, Camperdown, New South Wales

Building and construction services for an apartment block called “Aperture” or “Marrickville Luxury Apartments”

JML-46 Tender Bundle: 2072

Ex A20 (page 13)

PS-9 Tender Bundle: 4127, 4128

H.2

From October 2018

at the website at www.aperturemarrickville.com.au (or authorised such use)

Building and construction services in respect of apartments at the “Aperture at Marrickville” construction project

PS-7 Tender Bundle: 4089

H.3

From the latest February 2019 (but no earlier than 2 May 2018)

at its website at the domain name www.henleygallery.com.au

Building and construction services in respect of residential projects and the multi-dwelling apartment block at the “Aperture Apartments” construction project

JML-59

I

I.1

From at the latest 2018 and ongoing

On a crane located around 30m in the air including when lit up at night, including at:

(a) Between at least around September 2018 to November 2019, at St Charbel’s Care Centre, 81-83 Waterloo Road, Punchbowl, New South Wales ;

(b) From at least March 2021 at the “Botany Living” site at 1445-1447 Botany Road, Botany, New South Wales.

Building and construction services at each site and generally for building and construction services

Ex R22 (pages 25, 27)

I.2

From about 2018

On Facebook and Instagram

Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks

Facebook - Ex A19 (pages 2, 10)

Instagram - Ex A20 (pages 7, 8)

J

“#henleyconstructions”, “#henleygallery”, “#henley”, images of the third Henley Constructions logo appearing on decals on vehicles, hoarding at constructions sites and safety/hi-vis clothing

J.1

From about July 2018

On Instagram

Building and construction services in respect of residential and commercial projects

Ex A20 (#henleyconstructions all) (#henley at pages 11, 13)

PS-9 (#henleyconstructions)

PS-9 Tender Bundle: 4119 (#henleygallery),

PS-9 Tender Bundle: 4127, 4128 (#henley)

J.2

Since at least 15 February 2018

On Facebook

Building and construction services in respect of residential and commercial projects, repair, flooring, remedial work, general maintenance and cleaning services, and a number of multi-dwelling apartment blocks

Ex A19

JML-91

K

Henleygallery.com.au; HENLEY BUILT

K.1

From the latest February 2019 (but no earlier than 2 May 2018)

At its website at the domain name www.henleygallery.com.au

Building and construction services in respect of residential projects and the multi-dwelling apartment block at the “Aperture Apartments” construction project

JML-59 (domain name henleygallery.com.au)

JML-59 (HENLEY BUILT) Tender Bundle: 2148, 2151

L

HNLY

L.1

Since around mid 2017

On the number plate of utes decorated with decals showing the third Henley Constructions logo (that have been parked at or in front of building and construction sites), including in the form 01-HNLY, 05-HNLY, 12-HNLY

Building or construction services in respect of single dwellings and multi-dwelling apartment blocks

PS-9 Tender Bundle: 4117 (Instagram image of “Fleet of vehicles” showing decal)

P Sarkis XXN T.321.23-34

355    Henley Arch submits that the signs set out in the Particulars Table above have infringed a number of its trade marks. For simplicity, I will reproduce the table from [14] of this judgment, directly below which outlines the trade marks owned by Henley Arch, which it contends have been subject to trade mark infringement. Each of the trade marks listed in the table below are registered in respect of building and construction services.

Mark

Reg. No

Priority Date

Registered Services

HENLEY

1152820

18 December 2006

Building and construction services (class 37); architectural, engineering, design, drafting and interior design services (class 42)

1152818

18 December 2006

HENLEY WORLD OF HOMES

1152819

18 December 2006

HENLEY ESSENCE

1806558

2 November 2016

Building and construction services (class 37); architectural, engineers, design, drafting and interior design services including construction design and construction drafting (class 42)

HENLEY RESERVE

1806561

2 November 2016

HENLEY COLLECTION

1806570

2 November 2016

Signs used as a trade mark in the course of trade and in relation to the designated services

356    In order for trade mark infringement to be made out under s 120 of the TMA, it is necessary to establish that the alleged infringing marks have been used in the course of trade, and further, that the alleged infringing marks were used in the course of trade in relation to similar or identical goods or services to those which are provided by the owner of the registered trade mark(s). It must therefore be shown by the applicant that the marks set out in the Particulars Table were used in the course of trade and within the provision of building and construction services.

357    The details of the services in respect of which Henley Arch submits that each of the Henley Constructions signs has been used are set out in the Particulars Table above. Henley Arch submits that it does not appear to be the case that the signs in the Particulars Table can be said to be used in respect of anything other than building and construction services. Henley Arch submits that those services include building and construction of apartments, apartment buildings, single dwelling homes and building and construction services in the nature of renovations and alterations of those kinds of buildings.

358    Henley Arch submits that Henley Constructions has only admitted that it has used the HENLEY CONSTRUCTIONS” mark, (found at Reference D in the Particulars Table) as a trade mark in the course of trade in Australia. Henley Arch referred to [18] of Henley Constructions’ Amended Defence, which provides that “Henley Constructions admits it has used “Henley Constructions” in relation to “building and construction services” …”. Henley Arch submits that Henley Constructions otherwise denies that it has used the other signs referred to in the Particulars Table above as trade marks.

359    Henley Arch submits that each sign has been used in relation to either the provision of Henley Constructions’ building and construction services or the promotion of Henley Constructions’ building and construction services in a manner which would lead a person observing each sign to view it as a badge of origin (or a “brand”) of those services, in the sense of distinguishing its services from those of others. I outline each of the claims made by Henley Arch with respect to the issue of trade mark use directly below.

Signs Henley Arch alleges have been used in the course of trade and for the designated services

Henley hashtags

360    Henley Arch submits that the use of the sign#henley as a hashtag is a separate use of that sign as a trade mark in relation to building and construction services in Henley Constructions’ Instagram feed, even though it falls within the text “#henleyconstructions #henley #camperdown #2050 #construction #Sydney #developer #builder …”. Henley Arch submits that the uses of #henley on Facebook, and of #henleyconstructions and #henleygallery on Instagram and Facebook, are separate uses of those signs as trade marks in relation to building and construction services for the same reason.

Henley Constructions logos

361    Henley Arch submits that the Henley Constructions logos (references A, C and G of the Particulars Table) are clearly presented as badges of origin. Henley Arch submits that the stylised nature of these signs makes them immediately recognisable as badges of origin and a reasonable person would understand them to be operating as brands. Henley Arch submits that the impact of the Henley Constructions logos does not change because they are presented on signs at construction sites, company cars or safety clothing. Henley Arch submits that these signs appear as brands within the context that they are presented, namely within the construction services business, and this occurs in a manner that is familiar to ordinary people.

362    Henley Arch submits that, for example, the use of the third Henley Constructions logo on the side of buildings with the word “by” indicates that the building was built by the user of that mark, namely Henley Constructions. Henley Arch submits that Mr Sarkis accepted in cross-examination that Henley Constructions affixed the third Henley Constructions logo in that manner and for that purpose and it plainly operates in that way.

1300HENLEY, Henley Built and Henley Display Gallery

363    Henley Arch submits that the other signs used by Henley Constructions incorporating the word “Henley” are the phone number “1300HENLEY (at reference F), the word HENLEY (at reference E) appearing on cranes, “Henley Built (at reference K) and “The Henley Display Gallery (at reference H). Henley Arch submits that, as with the use of the name Henley” solus, these uses of, “Henley” all emphasise the word “Henley” as being a brand, with which Henley Constructions has promoted itself. Henley Arch submits that these are not descriptive uses, but are in the nature of marketing. Henley Arch submits that the use of these words and logos would prompt a reasonable person seeing these signs, to recall the name “Henley” and to associate it with construction services.

Number Plates

364    Henley Arch submits that Henley Constructions also uses variations of “Henley” on its corporate vehicle licence plates, such as HNLY and H3NL3Y. Henley Arch submits that, the use of these signs on a single vehicle in a different context outside of the building and construction industry might not be considered use as a badge of origin for these services. However, in the case of Henley Constructions, these licence plates appear on a fleet of vehicles (about 15 vehicles), which are construction utility-type vehicles and these vehicles also bear the third Henley Constructions logo (at reference G in the Particulars Table). Henley Arch submits that, in the context of the use of these licence plates, they are operating as brands for the construction services of Henley Constructions.

Domain Names

365    Henley Arch submits that the last category of signs used by Henley Constructions are the domain names: henleyconstructions.com.au and henleygallery.com.au (at references B and K in the Particulars Table). Henley Arch submits that, as with the relevant licence plates, domain names may not always operate as trade marks, and context is important. Henley Arch submits that, when used by Henley Constructions, the relevant domain names appear on Facebook and Instagram, corporate business cards and signs at construction sites and appear as marketing that directs viewers to those websites, and which in turn promote the construction services of Henley Constructions.

Henley

366    Lastly, with respect to the use of “Henley” solus, Henley Arch submits that Henley Constructions has used the word “Henley” solus as a trade mark, in a number of applications. Henley Arch submits that during 2017, Henley Constructions referred to itself as “Henley” on its website on a number of locations. Henley Constructions has used the word “Henley” and allusions to the word on personalised vehicle number plates affixed to company vehicles. The Henley Constructions phone number, “1300HENLEY, was adopted to allude to the word “Henley”, and “Henley” is used on the business’s headquarters building. Henley Constructions has used the hashtag, “#henley” to accompany promotional photographs posted on its Instagram account. Henley Constructions has also operated the promotional website henleygallery.com.au, which features its services under the title “The Henley Display Gallery”.

367    Henley Arch submits that Henley Constructions has submitted that various signs used by it in the Particulars Table, do not have the character of brands and their use should not be considered trade mark use.

368    Henley Arch submits that, on each occasion the viewer of the word “Henley (as it appears across the various signs within the Particulars Table) would know or associate the origin of any building and construction services in respect of which that sign is used. Henley Arch submits that in Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; (2006) 154 FCR 97 at [77], the Full Court of the Federal Court of Australia (Full Court) (per Heerey, Allsop (as the Chief Justice then was) and Young JJ) found that:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin.

369    Henley Arch submits that the use of a sign in promotional material that describes the services would be understood by a reasonable person to indicate that the sign identifies the provider of those services, and in that context, is considered use as a trade mark in relation to those services. Furthermore, use of a sign in close proximity to the provision of services in a way which would be understood by a person to indicate that the sign identifies the provider of those services, is also used as a trade mark in relation to those services, such as on the front door of an office or a letterbox.

Substantially identical or deceptively similar

370    If a finding has been made that a mark has been used in the course of trade in relation to the relevant goods or services, then the next step in a finding that trade mark infringement has occurred under s 120 of the TMA, is that the alleged infringing marks must be shown to be substantially identical, or deceptively similar to the registered trade marks owned by the applicant.

371    Henley Arch, in its submissions, referred to [17] of Henley Constructions’ Amended Defence. That paragraph relevantly provides:

… Henley Constructions says[:]

a.     Save that it admits that the name “Henley” is substantially identical to Australian Registered Trade Mark Number 1152820 HENLEY it otherwise denies that the names “Henley” and “Henley Constructions” are substantially identical to the Registered Henley Marks;

b.     It admits that the name “Henley” is deceptively similar to;

i.     Australian Registered Trade Mark Number 1152818 for the device mark pictured in paragraph 8(b) of the Statement;

ii.     Australian Registered Trade Mark Number 1152819 for the words “HENLEY WORLD OF HOMES”;

iii.     Australian Registered Trade Mark Number 1806558 “HENLEY ESSENCE”;

iv.     Australian Registered Trade Mark Number 1806561 “HENLEY RESERVE” and

v.     Australian Registered Trade Mark Number 1806570 “HENLEY COLLECTION”[.]

372    Henley Arch also referred to [31] of the Second Further Amended Statement of Cross-Claim, which states “HENLEY CONSTRUCTIONS is deceptively similar to the HENLEY trade mark (being Australian Trade Mark Registration No. 1152820 HENLEY)”.

373    With respect to the admissions made by Henley Constructions in its submissions outlined above at [371] and [372], Henley Arch submits the following:

(1)    First, these admissions amount to a concession that Henley Constructions’ use of “Henley” on its own as a trade mark in respect of building and construction services would cause consumers to wonder whether there is a link with the true owner of those registered marks, notwithstanding each mark has other words or elements in them. Henley Arch contends that this is because the word “Henley” is a key, memorable and distinctive element of each of those marks. Henley Arch submits that this extends to all uses of “Henley” solus by Henley Constructions, including as crane signage (where if the word “constructions” is present, it cannot be seen), “#henley”, “Henley Built”, “Henley Gallery” and “The Henley Display Gallery” and in the number 1300HENLEY.

(2)    Second, these admissions amount to a concession that the word “Constructions” in “Henley Constructions” does not affect the mark in such a way that persons with knowledge of the word “Henley” would not be caused to wonder if there was a link between the users of each of those marks.

374    Henley Arch submits that certain marks used by Henley Constructions should be viewed as being substantially similar to some of its marks. Henley Arch submits that all of the other marks should be viewed as being deceptively similar and therefore in breach of s 120 of the TMA. I outline these submission below.

375    As to the marks alleged to be substantially identical, Henley Arch submits that the “HENLEY CONSTRUCTIONS” mark is substantially identical with both the HENLEY mark and the HENLEY PROPERTIES Device Mark because the differences between the marks do not substantially affect the identity of the mark. Henley Arch also submits that the name “Henley” is substantially identical to its “HENLEY” trade mark (1152820), to which Henley Constructions agreed. Henley Arch submits that it is unnecessary to consider substantial identity between each of the other Henley Constructions signs and each of Henley Arch’s marks since deceptive similarity is sufficient for infringement purposes.

376    As to deceptive similarity, Henley Arch submits that consumers of building and construction services take greater care when procuring these services compared to consumers of ordinary grocery items from a supermarket. However, Henley Arch submits that, even assuming that the imperfect recollection of the consumer is minimal and they remember each registered mark in its entirety, to the extent that a consumer recognises any difference between the marks, they are likely to be “caused to wonder” whether each Henley Constructions sign is merely a brand variation or extension of each of Henley Arch’s trade marks or is otherwise associated with the owner of those registered marks. Henley Arch submits that the evidence of Mr Sarkis was that “Henley” solus was a common way to abbreviate the company’s name “Henley Constructions, and this is reflected in the manner in which he recalled conversations about the selection of the name – i.e. Mr Sarkis chose “Henley”, not “Henley Constructions”. Indeed, that choice is reflected in Mrs Sarkis’s handwritten note (extracted above), which records “Henley D’s/C’s”, indicating that “Henley” was the name, and the word developments or constructions was immaterial.

377    Henley Arch submits that, as to a comparison between the HENLEY PROPERTIES Device Mark and each of the signs in the Particulars Table:

(1)    The HENLEY PROPERTIES Device Mark comprises a triangular device, the prominent word “Henley”, and “properties” in smaller font underneath. Henley Arch submits that, to the extent the triangular device might be seen as the top of a roof, it alludes to building and construction services, but in any event, is a purely visual device that does not affect the manner in which the mark would be communicated orally. Henley Arch submits that, as to the word parts of the mark, “Henley” is emphasised considerably, and the word “properties” is descriptive of building and construction services.

(2)    As to “Henley Constructions”, the first word “Henley” is given prominence by being the first word. Henley Arch submits that the word “Constructions” is purely descriptive of building and construction services. Henley Arch submits that it is the word “Henley” that is distinctive (and the “dominant cognitive cue”). Henley Arch submits that, in these circumstances, a number of persons will be caused to wonder whether it might not be the case that building and construction services provided under Henley Constructions came from the same source as those provided under the HENLEY PROPERTIES Device Mark. Henley Arch submits that the same reasoning applies to #henleyconstructions and henleyconstructions.com.au.

(3)    As to each of the Henley Constructions logos, Henley Arch submits that it is sufficient that they each include “Henley Constructions” and the observations above apply equally. Henley Arch submits that the triangular device in the Henley Constructions logos does not distinguish those logos from the HENLEY PROPERTIES Device Mark, but in fact its simple triangular form is reminiscent of the device in the HENLEY PROPERTIES Device Mark, and is also to the left of the words as in the HENLEY PROPERTIES Device Mark, which Henley Arch submits increases the likelihood of consumers being caused to wonder if the services come from the same source: Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited [1953] HCA 73; (1953) 91 CLR 592 (Southern Cross) at 595; Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163 (Allergan) at [24]. Henley Arch submits that the third Henley Constructions logo is structurally almost identical to that of the HENLEY PROPERTIES Device Mark with the word “Construction” and “Properties” respectively being in smaller font and underneath the main feature “Henley”.

(4)    In respect of the HENLEY PROPERTIES Device Mark and the other signs used by Henley Constructions (being #henley, #henleygallery, henleygallery.com.au, 1300HENLEY, HENLEY crane signage, “The Henley Display Gallery”, “Henley Built” and “HNLY” etc used on cars), Henley Arch submits that these signs all incorporate the word “Henley” alone as the key memorable feature (and the “dominant cognitive cue”) or with additions or alterations that do not distinguish the marks in a way which would remove the likelihood of confusion. Henley Arch submits that it is not unusual for brands to be shortened or presented without logos, and logos are not used in speech to describe brands (i.e. people say “Henley”). Henley Arch submits that, in these circumstances, a number of persons will be caused to wonder whether it might not be the case that building and construction services provided under the various Henley Constructions “Henley” signs came from the same source as those provided under the HENLEY PROPERTIES Device Mark.

378    Henley Arch submits that, as to the HENLEY WORLD OF HOMES Mark and a comparison to the Henley Constructions signs:

(1)    The HENLEY WORLD OF HOMES mark is a word mark and can be used in any form. Henley Arch submits that, for example, the words “world of homes” can be made less prominent and placed below the word HENLEY.

(2)    The phrase “WORLD OF HOMES” is being used in the mark descriptively for building and construction services in the sense that Henley Arch is offering a world of homes from which to choose to build.

(3)    The phrase “WORLD OF HOMES” is also logically separable from the word HENLEY. Henley Arch submits that “world of homes” as a phrase alone makes sense grammatically whereas the phrase “Henley world of homes” does not make sense unless one notionally thinks of it as Henley’s “world of homes”, and doing that naturally splits up the mark into:

    (a) the distinctive word “Henley”; and

     (b) the descriptive phrase “world of homes”.

(4)    Henley Arch submits that, as a result, the idea of this mark that is left in the mind, at its narrowest, is that Henley is a builder of a “world of homes”. Henley Arch submits that the more likely impression left is that there is a builder with the umbrella brand “HENLEY” that uses the brand HENLEY with the tag line WORLD OF HOMES.

(5)    In these circumstances, each of the Henley Constructions signs is deceptively similar to the “HENLEY WORLD OF HOMES sign, predominantly because each of the Henley Constructions signs has as a dominant memorable feature, the word “Henley” alone, or with additions or alterations that do not distinguish the marks in a way which would remove the likelihood of confusion or cause to wonder whether the services offered by Henley Constructions under its relevant signs are form the same source: Shell at 415; Southern Cross at 595; Allergan [24].

379    Henley Arch submits the following with respect to theHENLEY COLLECTION, HENLEY RESERVE and HENLEY ESSENCE marks:

(1)    Each of the HENLEY COLLECTION, HENLEY RESERVE and HENLEY ESSENCE marks have the essential idea of the umbrella brand HENLEY combined with a descriptive term “collection” (ie a collection of things such as homes), “reserve” (ie special range of things) or “essence” (ie the essence of or essential building services). Henley Arch submits that these matters have a diminished value in assessing deceptive similarity because the word “Henley” is dominant visually (as being the first and distinctive word in the mark) and aurally (for the same reasons).

(2)    In these circumstances, each of the Henley Constructions signs is deceptively similar to each of the HENLEY COLLECTION, HENLEY RESERVE and HENLEY ESSENCE marks predominantly because each of the Henley Constructions signs has as a dominant memorable feature, being the word “Henley” alone or with additions or alterations that do not distinguish the marks in a way which would remove the likelihood of confusion or cause to wonder.

(3)    There is even less distinction between the Henley Constructions signs that include or comprise the words “Henley Constructions” and HENLEY COLLECTION, given the visual and aural similarity between the words “Constructions” and “Collection”.

380    On 7 September 2021, the Full Court handed down its decisions in Allergan. Following the Full Court’s decision in Allergan, the parties were requested to provide submissions to my chambers outlining how this decision would affect the parties’ position in this proceeding, if at all. Henley Arch made the following further submissions.

381    Henley Arch submits that Allergan reinforces its submissions on the question of trade mark infringement under section 120(1) of the TMA on the question of deceptive similarity between the relevant marks.

382    Henley Arch submits that, for the purposes of section 120(1) of the TMA, it is sufficient if the impugned mark that is used in relation to the registered services is deceptively similar to the registered mark. The Full Court in Allergan at [24] stated that:

Deceptive similarity raises, as a central question, whether there is a real risk that the consequence of use of the allegedly infringing mark would result in persons being caused to wonder whether it might not be the case that the products in respect of which the mark is used come from the same source as products the subject of the mark said to be infringed.

383    Henley Arch submits that the Full Court in Allergan at [28] reiterated that the “confusion” to which the relevant provisions of the TMA are directed is confusion as to the source of the products as opposed to confusion between the marks or products themselves.

384    Henley Arch submits that the Full Court found in Allergan at [30], [41] and [42] found that while consumers would not have confused the words or names PROTOX for BOTOX, or thought that the PROTOX branded anti-wrinkle topical cream was the same as the BOTOX branded anti-wrinkle injection, the similarity between the marks would cause consumers to wonder whether the products came from the same source. As a result of this confusion, the Full Court found that there was infringement of Allergan’s registered trade mark BOTOX pursuant to section 120(1) of the TMA.

385    Henley Arch submits that its trade marks are all registered in respect of building and construction services. Accordingly, Henley Arch submits that, for the purposes of assessing infringement of those registered marks under section 120(1) of the TMA, it should be assumed that consumers have knowledge of each of Henley Arch marks in respect of the breadth of building and construction services, which necessarily includes the services in respect of which Henley Constructions has used its various signs. Henley Arch submits that Henley Constructions has not asserted that Henley Arch’s actual use of, or reputation in, the registered marks are relevant to section 120(1) of the TMA. Henley Arch submits that the circumstances surrounding Henley Constructions’ use of the relevant marks are not relevant to the question of deceptive similarity in s 120(1).

386    Henley Arch submits that, to the extent Henley Constructions has denied that any of its signs are deceptively similar to any of Henley Arch’s marks, then in light of Allergan, the correct question is whether the similarity between a Henley Constructions sign and a Henley Arch mark would cause consumers to wonder whether the source of the services to which those marks are actually the same.

387    Henley Arch submits that the Full Court in Allergan observed that there would be infringement of the BOTOX mark in that case even if consumers had known that there was no seller of botulinum toxin products which also sold anti-wrinkle creams, because those “consumers would wonder whether those behind BOTOX had decided to expand into topical cosmetic anti-wrinkle products”: Allergan at [43].

388    Henley Arch submits that the Full Court also considered whether the sign “instant Botox® alternative” was deceptively similar to BOTOX and found at [74]:

The use of these descriptive words [instant and alternative] around the dominant word “Botox®” make the phrase less similar to BOTOX, but there is a real risk that use of the phrase “instant Botox® alternative” would cause people to wonder whether the different products came from the same source.

389    Henley Arch submits that to the extent that the signs used by Henley Constructions include other words or imagery, the addition is merely descriptive and, like the words “instant” and “alternative” added to “Botox®”, are unlikely to ameliorate this risk. Henley Arch submits this is so, even though purchasers of building and construction services take greater care with their purchase than a consumer might of supermarket items.

390    Henley Arch submits that even if consumers assumed that no single-dwelling home builder builds multi-dwelling apartment blocks, those consumers would still be caused to wonder whether the enterprise behind the single dwelling home building services provided under Henley Arch’s registered marks had decided to expand into building the apartment blocks under the various impugned signs used by Henley Constructions.

Henley Constructions’ submissions

Use as a trade mark in the course of trade

391    Henley Arch has made a number of submissions above which allege that Henley Constructions’ use of the various marks outlined in the Particulars Table, amount to use as a trade mark in the course of trade for building and construction services.

392    Henley Constructions submits that, aside from the “HENLEY CONSTRUCTIONS sign (reference D), it has not used any of the other marks as trade marks.

393    Henley Arch submits that all of the signs in the Particulars Table, apart from “Henley Constructions”, do not have the character of brands and therefore do not amount to trade mark use. I note that it seems that there was some confusion in the parties’ submissions, or at least those of Henley Constructions, about this issue, as some of the marks described below were not identified as separate marks in the Particulars Table, but rather as instances where some of the marks that are referenced in that table were used. I distinguish these marks below.

394    Henley Constructions submits, in essence, that a finding of trade mark infringement may only be made under s 120 of the TMA when a person “uses as a trade mark a sign”, not when they merely display a sign.

395    In Part E of Henley Constructions’ Closing Defence submissions, Henley Constructions has made submissions to this effect, and has described how certain instances of use of its various signs should not be considered trade mark use. I outline these submissions below.

396    Henley Constructions submits that in order for any one particular display of a sign to be considered trade mark use by Henley Constructions, the following elements must be established by Henley Arch:

(a)    the sign must be used by Henley Constructions “in the course of trade” in relation to particular goods or services which can then be compared with the services listed in the registrations. It cannot merely be displayed in the course of trade for any purpose. Henley Constructions submits that, to be used “in the course of trade” Henley Constructions must be using the signs to actually offer the particular goods or services to consumers or have a settled intention to do so: Moorgate Tobacco Co Ltd v. Phillip Morris Ltd [1984] HCA 73;156 CLR 414 at p 433-434; and

(b)    the signs must be used to distinguish Henley Constructions’ goods or services from those of other traders. Henley Constructions submits that, whether or not it serves this purpose of indicating a connection with Henley Constructions is to be judged from the perspective of the consumer observing the sign in the setting it is presented: Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (Shell) at p 425.

397    Henley Constructions submits that Henley Arch’s allegations with respect to it using the signs in the Particulars Table as trade marks, should fail on one or more of the submissions outlined above. I set out each of Henley Constructions submissions with respect to its signs below.

1300HENLEY

398    Henley Constructions submits that, as to the “1300HENLEY” mark (at reference F), the display of the phone word “1300HENLEY” has only been as a phone number in close proximity to “HENLEY CONSTRUCTIONS”. Henley Constructions submits that such display will not be viewed by the consumer as a trade mark and that the mere listing of a contact number should not be considered use of a trade mark.

128 HENLEY

399    As to “128 HENLEY” (identified as an instance of use at references E, G and H, and identified as the use of those signs at the “128 Parramatta Road” site), Henley Constructions submits that HENLEY is the name of a building, and would only be viewed as a building’s name rather than use as a trade mark. Henley Constructions submits that no evidence was led by Henley Arch to suggest that the building was used in the course of providing any building and construction services, and the name of the building is not used in the course of trade.

HENLEY DISPLAY GALLERY

400    As to the “HENLEY DISPLAY GALLERY” (at reference H), Henley Constructions submits that the building in which the display gallery is located features two displays of the HENLEY CONSTRUCTIONS sign on the roof signage. Henley Constructions submits that it is these roof signs that indicate brand origin, whereas the “HENLEY DISPLAY GALLERY” sign, on the other hand indicates the shop front has a display gallery in the building. Henley Constructions submits that there is no evidence demonstrating trade mark use in relation to any particular good or service provided by Henley Constructions, and nor is there any evidence as to what the consumer experience was inside this building, what good or service was being offered or by whom. Henley Constructions submits that Mr Sarkis, in cross examination, mentioned the display was undertaken with a “business partner” and it was used to promote the “Marrickville display suite”. Henley Constructions submits that, while the matter was not further explored with Mr Sarkis, it would seem from this evidence that the gallery was promoting a finished product (i.e. dwellings) and perhaps real estate services, but not ongoing construction services. Henley Constructions submits that the display of HENLEY DISPLAY GALLERY falls short of being evidence of trade mark use in relation to goods or services.

23 The Grand Parade, Brighton Le Sands

401    Henley Arch submits that Henley Constructions has engaged in trade mark infringement by the use of signs at the property located at 23 The Grand Parade, Brighton-Le Sands (identified as an instance of use at references G and D, as the “23 The Grand Parade” site). Henley Constructions submits that Mr Sarkis gave clear evidence that Henley Constructions did not build single dwelling homes, nor did it have any intention to use HENLEY CONSTRUCTIONS in relation to the building of single dwelling homes, and it was not acting in the course of trade. Henley Constructions submits that the work undertaken on these dwellings was for Mr Sarkis’s friends, and therefore was not used in the course of trade by Henley Constructions.

Number plates

402    As to the relevant number plates, Henley Constructions submits that the allegation of infringement in relation to the display of number plates has not been framed in a manner that readily permits an analysis of the claim made.

403    Lastly, Henley Constructions submits, further and in the alternative, that even if “1300 HENLEY”, “128 HENLEY” or “HENLEY DISPLAY GALLARY” is found to amount to trade mark use, no such use amounts to use of “Henley” solus as a trade mark. Therefore, these alleged trade marks would not be deceptively similar to any of Henley Arch’s registered trade marks. I note that no submissions were made by Henley Constructions with respect to the other Particulars Table signs in this respect, such as the Henley Constructions logos.

Substantially identical or deceptively similar

404    Henley Arch has, as outlined above, made a number of submissions which allege that Henley Constructions’ use of the various marks outlined in the Particulars Table, amount to an infringement with respect to various trade marks owned by Henley Arch. I will deal with each of these alleged trade mark infringements below. For ease of reference, I will adopt the trade marks that Henley Arch alleges have been infringed as headings below and detail Henley Constructions’ submissions in respect of these allegations.

Substantially identical marks

HENLEY mark (1152820)

405    Henley Arch submits that Henley Constructions’ use of the signs “HENLEY CONSTRUCTIONS” and “Henleyamounts to trade mark infringement because these signs are substantially identical with its “HENLEY” trade mark (1152820).

406    I will deal with Henley Constructions submissions with respect to these claims in turn below.

407    Henley Constructions admits that its mark "HENLEY CONSTRUCTIONS” is deceptively similar to Henley Arch’s “HENLEY” trade mark (1152820). It, however, denies that these marks are substantially identical.

408    While Henley Constructions submits that the “Henley” mark is not used as a trade mark, Henley Constructions admits that the “Henley” mark is both substantially identical with, and deceptively similar to, Henley Arch’s “HENLEY” trade mark (1152820). However, Henley Constructions submits that the “HENLEY” trade mark (1152820) should be cancelled and therefore this infringement claim should be void ab initio.

HENLEY PROPERTIES mark

409    Henley Arch submits that Henley Constructions’ use of the sign “HENLEY CONSTRUCTIONS” amounts to trade mark infringement because that sign is substantially identical with the “HENLEY PROPERTIES” Device Mark (1152818) or, in the alternative, is deceptively similar to this mark.

410    Henley Arch further submits that all of the other marks in the Particulars Table are deceptively similar to the “HENLEY PROPERTIES” Device Mark (1152818).

411    Henley Constructions submits that its use of the “HENLEY CONSTRUCTIONS” mark does not amount to trade mark infringement because this mark consists of a number of striking graphic features that are not featured in the “HENLEY PROPERTIES” Device Mark.

412    Henley Constructions submits that it is “almost unarguable” that the “HENLEY PROPERTIES” Device Mark and the “HENLEY CONSTRUCTIONS” mark can be considered substantially identical. Henley Constructions submits that the well-known side-by-side comparison has been applied consistently with the purpose of laying the boundaries of ownership in mind. Henley Constructions submits that this comparison does not focus on addressing alleged consumer confusion. Its purpose is therefore quite distinct from the broader notion of deceptive similarity and its application ought not be extended beyond its plain meaning: per Gummow J in Carnival Cruise Lines Inc. v. Sitmar Cruises Ltd [1994] FCA 68; (1995) 31 IPR 375 at p.391, where his Honour found that:

It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of one extends to the other.

413    Henley Constructions submits that it has been recognised more recently by the Full Court that the total impression of similarity may emerge when the essential features or dominant cognitive cues are entirely identical: Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; 251 FCR 379 (Pham Global) and Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205 (Accor).. Henley Constructions submits that Henley Arch has emphasised the role of essential features and dominant cognitive cues in its submissions. Henley Constructions submits that it is not aware of a single authority to support the proposition that even when an essential feature or dominant cognitive cue is absent in one mark and present in the other, the two marks may still held to be substantially identical”. Henley Constructions submits that there is a prominent graphic device in the “HENLEY PROPERTIES” Device Mark that is absent from the “HENLEY CONSTRUCTIONS” sign. Henley Constructions submits that the two are not substantially identical.

414    In this respect, Henley Constructions submits that the only common element between the “HENLEY COSTRUCTIONS” mark and the “HENLEY PROPERTIES” Device Mark is the element “HENLEY”, which is both a common surname and geographic location in Sydney. Henley Constructions submits that the name “Henley” also features as part of the name of locations in South Australia (Henley Beach and Henley South Beach) and Western Australia (Henley Brook). Henley Constructions submits that this HENLEY element therefore has a degree of commonality in the eyes of consumers, and the consumer seeing a logo with distinctive graphic devices would not be misled by the use of the common element in another mark. Henley Constructions submits that it should not be discounted that the word “CONSTRUCTIONS” dominates the HENLEY CONSTRUCTIONS word mark and is unlikely to be ignored by a consumer. Henley Constructions submits that the purchasing of construction services by the average consumer is a high value and carefully considered purchase, and it may be the most high value purchase in many consumers’ lives. Henley Constructions submits that minor differences in branding will be noticed, and this greatly reduces the chance of deceptively similarity.

415    Henley Constructions submits that, in these circumstances, the HENLEY PROPERTIES Device Mark and the HENLEY CONSTRUCTIONS mark are not substantially identical (and nor are they deceptively similar).

Deceptively similar marks

416    Henley Constructions submits that there are a number of guiding principles which are of assistance in applying the test identified in Shell, which applies to the question of whether two trade marks are deceptively similar. Henley Constructions submits that the most relevant of these principles to this matter are:

(a)    that the trade marks ought to be considered as in their totality rather than broken into their parts: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC [58] (Food Channel);

(b)    despite the fact that two trade marks must be compared in their totality, it is open to the Court to provide more or less weight on similar elements of those marks. For example, elements of the trade marks that are common in their respective trade are therefore less likely to be striking to the consumer are to be given little weight when considering whether two trade marks over all are deceptively similar: Cooper Engineering Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at pp 538 and 539; and

(c)    the comparison of the trade marks ought not take place in isolation when considering the goods or services for which registration is sought. Deceptive similarity is more likely to occur when the trade marks concern goods or services likely to be purchased quickly rather than goods or services that consumers may take longer to purchase: Hypertec Pty Ltd v Kabushiki Kaisha Tec [1996] ATMO 20.

417    Henley Constructions makes a number of submissions below with respect to deceptive similarity, and in doing so, Henley Constructions relies on the above principles outlined in their submissions.

HENLEY WORLD OF HOMES mark

418    Henley Arch submits that Henley Constructions’ use of each of the signs in the Particulars Table amounts to trade mark infringement because all of these signs are deceptively similar to Henley Arch’s sign “HENLEY WORLD OF HOMES”.

419    Henley Constructions only put forward arguments in its submissions with respect to the “HENLEY CONSTRUCTIONS” mark. In this regard, Henley Constructions submits that, Henley Arch has, in effect invited the Court to disregard the highly distinctive WORLD OF HOMES elements and view the only the Henley” part of the mark as being relevant. Henley Constructions submits that this is an impermissible approach to assessing deceptive similarity, as was illustrated by the Full Court in Food Channel at [92].

420    Henley Constructions submits that “lengthy trade marks should be considered as a whole and not broken into their parts for the purposes of assessing deceptive similarity.

421    Henley Constructions submits, pursuant to the finding of the Full Court in Allergan, the average consumer of building services with an imperfect recollection of the former mark taking the expected great care and diligence for such high value transactions would not be deceived by encountering the latter mark in the course of trade.

HENLEY ESSENCE, HENLEY RESERVE and HENLEY COLLECTION marks

422    Henley Arch submits that Henley Constructions’ use of each of the signs outlined in the Particulars Table amounts to trade mark infringement because these signs are all deceptively similar to Henley Arch’s signsHENLEY ESSENCE, HENLEY RESERVE and HENLEY COLLECTION”.

423    Henley Constructions submits that these marks all have unusual and distinctive second elements. Henley Constructions submits that the HENLEY CONSTRUCTIONS” mark is not deceptively similar to any of them.

424    Henley Constructions submits that, further and in the alternative, Henley Constructions has prior continuous use of the “HENLEY CONSTRUCTIONS” mark dating back before 2 November 2016, or any alleged use of Henley Arch’s trade marks “HENLEY ESSENCE, HENLEY RESERVE and HENLEY COLLECTION. Henley Constructions submits that even if the marks were deceptively similar, the defence under s 124 applies in the alternative.

425    On 1 October 2021, Henley Constructions provided the following submissions to my chambers outlining its position in relation to the Full Court’s decision in Allergan.

426    Henley Constructions submits that for the purposes of assessing deceptive similarity, the Court must ask, if standing in the shoes of a consumer with an imperfect recollection of each of the Henley Arch’s relevant registered marks, whether there is a real risk that it would be caused to wonder whether Henley Constructions’ services come from the same source as the Henley Arch’s services.

427    Henley Constructions submits that the issue of deceptive similarity is primarily disputed in relation to five of Henley Arch’s registered marks and Henley Constructions submissions with respect to these marks in light of the Full Court’s decision in Allergan is addressed below.

HENLEY PROPERTIES Device Mark

428    Henley Constructions submits that in contrast to Allergan, where the Full Court considered the single word marks BOTOX and PROTOX, the HENLEY PROPERTIES Device Mark is a composite mark and due consideration must be given to each element of the mark. Henley Constructions submits that this should include the known word “Henley”, which is both a common surname and the name of geographical locations (i.e. suburbs in Sydney, Adelaide and Perth), the plural word “properties” which has a known meaning, and the device element which is comprised of multiple concentric triangles or arches appearing like the pitch roofs of houses, all of which convey to consumers that the mark identifies the source of a home builder service.

429    Henley Constructions submits that this is in contrast to the HENLEY CONSTRUCTIONS logos which connote industrial services in relation to the construction of multi-level buildings through the imagery of housing blocks. Henley Constructions submits that a person with an imperfect recollection of the HENLEY PROPERTIES Device Mark observing the sign in the context of the relevant building and construction services, is not likely to believe that it is connected with or originates from the Henley Arch. Henley Construction’s submits that this stands in contrast with the marks in Allergan, which it submits are distinct and invented word marks which would heighten the risk of confusion as to “source.

HENLEY WORLD OF HOMES

430    Henley Constructions submits that the HENLEY WORLD OF HOMES mark alludes to houses (i.e. “homes”) and a multitude of them (i.e. “world of”) and has the appearance of an advertising catch phrase rather than a main brand.

431    If the question is asked whether consumers where likely caused to wonder if a trader known as HENLEY WORLD OF HOMES was also the “source” of the relevant services, then the answer must be “no”. Henley Constructions submits that not only is there a divergence in appearance and sound, but a “source” focused approach only highlights the difference between this “mass-produced” house building brand providing a “world” of homes and a multi-level, multi-residential apartment building and mixed use building constructor promoting and producing a mere number of large multi-level buildings (and most certainly not a “world” of them).

HENLEY ESSENCE, HENLEY RESERVE and HENLEY COLECTION

432    Henley Constructions submits that each of HENLEY ESSENCE, HENLEY RESERVE and HENLEY COLLECTION take the appearance of sub-brands. Henley Constructions submits that as with HENLEY WORLD OF HOMES, a “source” focused approach is unlikely to result in a consumer being caused to wonder that Henley Arch is the provider of the relevant building services.

Consideration

Principles – the use of trade marks generally

433    Before turning to consider the effect of this evidence in relation to the infringement issue, it is convenient to identify some relevant legal principles. 

434    The use of a mark as a trade mark involves use of the mark to distinguish the goods or services of the person using the mark from the goods or services of any other persons. This is sometimes expressed as a badge of origin (or a “brand”) which shows a connection in the course of trade between goods or services and the person that applies the mark: The Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107 at [19]; cited with approval by the plurality in E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2010] HCA 15; 241 CLR 144 (E & J Gallo) at [43].

435    A mark can include any use of a sign, including as part of a domain name: see, for example, Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239 (Flexopack) at [58]-[62].

436    If words are used as a trade mark, any examination or assessment that takes place to try and distinguish the connection between the goods and services of the person that applies the mark from any other person, should be holistic and account for the context in which those words are used. This should include: the manner in which the words are used, the positioning of the words, type of font, size and colours, the totality of the packaging as well as the nature and purpose of its use: Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291; 183 FCR 450 at [50(d)]; Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik & Ors [2002] FCA 390; 56 IPR 182 (Anheuser-Busch) per Allsop J (as the Chief Justice then was) at [185]-[186].

437    In Shell, the High Court found that the context is highly relevant in determining whether a sign has been used as a trade mark or for some other purpose. Kitto J (with whom Dixon CJ and Taylor J agreed), observed at p 425 that:

… [T]he question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?

438    In Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6; 259 FCR 514, the Full Court provided a concise summary of the relevant considerations relating to the concept of trade mark use at [54]-[55]:

Use of a mark as a trade mark involves use of the mark to distinguish the goods or services of the person using the mark from the goods or services of other persons or, as it is sometimes expressed, as a badge of origin indicating a connection in course of trade between the goods or services in relation to which the mark has been used and the person applying the mark: see Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd (2016) 243 FCR 152 at [24]-[30] and the well-known authorities there referred to including E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (“E&J Gallo”), Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107 and Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407. E&J Gallo concerned a claim for an order under s 101(2) of the Act for the removal of the trade mark BAREFOOT in respect of wines on grounds of non-use. In opposing that claim the registered owner relied upon its use of a mark that included the word BAREFOOT in combination with a device in the form of a bare foot. In relation to the concept of trade mark use, the plurality (French CJ, Gummow, Crennan and Bell JJ) said at [41]-[43]:

The concept of “use” of a trade mark which informs ss 92(4)(b), 100(1)(c) and 100(3)(a) of the Trade Marks Act must be understood in the context of s 17, which describes a trade mark as a sign used, or intended to be used, to “distinguish” the goods of one person from the goods of others.

Whilst that definition contains no express reference to the requirement, to be found in s 6(1) of the Trade Marks Act 1955 (Cth), that a trade mark indicate “a connexion in the course of trade” between the goods and the owner, the requirement that a trade mark “distinguish” goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of “goods to which the mark is applied”. Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark. There is nothing in the relevant Explanatory Memorandum to suggest that s 17 was to effect any change in the orthodox understanding of the function or essential characteristics of a trade mark.

In Coca-Cola Co v All-Fect Distributors Ltd a Full Court of the Federal Court of Australia said:

“Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.”

    That statement should be approved.

(footnotes omitted)

We would also refer to the decision in Woolworths Ltd v BP plc (2006) 154 FCR 97 in which the Full Court said at [77]:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin …

Infringement under s 120(1) TMA

439    Infringement occurs where the alleged infringer uses as a trade mark sign that is either substantially identical, or deceptively similar, to the registered mark. The question of whether trade marks are substantially identical or deceptively similar are independent of each other, and will be considered separately below.

440    Section 120(1) of the TMA provides that:

A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. [Emphasis added]

441    The TMA provides a separate definition for “deceptively similar” at s 10, which states:

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion

Substantially identical

442    The starting point of an analysis as to whether marks are substantially identical is the well-known dicta of Windeyer J in Shell, where his Honour stated at p 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court's own judgment and partly on the burden of the evidence that is placed before it”. Whether there is substantial identity is a question of fact.

443    In Pham Global, the Full Court clarified the way in which a “side by side comparison” of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:

The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.

444    The Full Court in Pham Global found that the trade mark consisting of the words “Insight Clinical Imaging” as part of a device and “Insight Radiology” as part of a similar but different device were substantially identical with each other, due to the dominant cognitive clues or essential elements which existed between the marks.

Deceptively similar

445    The approach to determining deceptive similarity does not require a side-by-side comparison of the marks, unlike the approach taken in determining substantial identity as elucidated by the Full Court in Pham Global.

446    With respect to deceptive similarity, Windeyer J in Shell identified at p 415, that:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the defendant’s…”

447    Rather, when assessing deceptive similarity, what is relevant is the overall effect or impression that the trade marks will have on potential customers, and whether this resemblance is likely to deceive or cause confusion to those customers: Australian Woollen Mills Pty Ltd v The Commonwealth (1954) 92 CLR 424 (Australian Woollen Mills).

448    A determination of deceptive similarity is ultimately an evaluative exercise and reasonable minds may differ as to the conclusions drawn. In Food Channel, Keane CJ, Stone and Jagot JJ stated at [92]:

The determination by the judge of the question whether the mark is deceptively similar to Television’s trade mark was, no doubt, an evaluative exercise as to the outcome of which reasonable minds might differ.

449    Ultimately, it becomes a question of fact for the Court to decide whether or not there is a reasonable probability of deception or confusion; such that the use of the impugned mark should be restrained: Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; 385 ALR 514 (Hashtag Burgers), at [68].

450    In Hashtag Burgers, the Full Court provided a concise summary of these tests as well as the differences that exist between them at [60]-[68]:

Section 10 provides the following in relation to “deceptively similar”:

For the purposes of this Act, a trade mark is taken to be ‘deceptively similar’ to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion

The test for deceptively similarity [sic] has been long settled. In Australian Woollen Mills at 658, Dixon and McTiernan JJ described it as follows:

But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

A little while later, their Honours emphasised that the determination for the court is one of estimation and evaluation (at 659):

The main issue in the present case is a question never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

The summary provided by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407 at 415 also encapsulates the approach required by s 120(1):

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

The distinction between consideration of whether one mark is deceptively similar to another, rather than substantially identical, lies in the point of emphasis on the impression or recollection which is carried away and retained of the registered mark, when conducting the comparison. In this context, allowance must be made for the human frailty of imperfect recollection. In New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd [1989] FCA 124; 86 ALR 549, in a passage in his judgment not affected by the proceedings on appeal, Gummow J said at 589:

In determining whether MOO is deceptively similar to MOOVE, the impression based on recollection (which may be imperfect) of the mark MOOVE that persons of ordinary intelligence and memory would have, is compared with the impression such persons would get from MOO; the deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark:  Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414–15; Polaroid Corp v Sole N Pty Ltd [1981] 1 NSWLR 491 at 498.  The latter case is also authority (at 497) for the proposition that the essential comparison in an infringement suit remains one between the marks involved, and that the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit.

This passage was approved by the Full Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42 (Ryan, Branson, Lehane JJ) at [44].

It may be noted that the language of s 10 of the Trade Marks Act includes that a trade mark is taken to be deceptively similar to another if it so nearly resembles the other that it is likely to “deceive or cause confusion”. The learned authors of Shanahan at [30.1005] explain that the distinction between “likely to deceive” and “likely to cause confusion” does not reside in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the trade mark on prospective purchasers. They observe that in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

“Deceived’ implies the creation of an incorrect belief or mental impression and causing ‘confusion’ may go no further than perplexing or mixing up the minds of the purchasing public.  Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

(citations omitted)

This passage was approved by the Full Court in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107 (Black CJ, Sundberg and Finkelstein JJ) at [39].

Section 114 of the Trade Marks Act 1905 (Cth) referred only to whether one mark was “likely to deceive”. The addition in s 10 (of the current Trade Marks Act) of “likely to deceive or cause confusion” brought the language into line with earlier English legislation, but was probably redundant. As Kitto J noted in Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592 at 594, the corresponding section of the English Act included “or cause confusion” but, “while these words make the section more specific, they add nothing to its effect”. Those words “likely to deceive” were wide enough to catch mere confusion, even though it was “unlikely to persist up to the point of, and be a factor in, inducing actual sale” (at 595). The Full Court on appeal (at 608) agreed that there will be deceptive similarity if there is a real risk that “the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source”.

Despite the absence of a need for any defendant to have formed an intention to deceive or cause confusion, it may nevertheless be a relevant factor to take into account in the evaluation of deceptive similarity that the defendant did have that intention, as Dixon and McTiernan JJ explained in Australian Woollen Mills at 657.

However, the role of intention in the analysis should not be overstated. It is but one factor for the court to take into account in its evaluation. As the majority held in Australian Woollen Mills at 658, in the end it becomes a question of fact for the court to decide whether or not there is such a reasonable probability of deception or confusion that the use of the impugned mark should be restrained. That proposition may be demonstrated by noting that regardless of the mala fides of an alleged infringer, unless the impugned trade mark sufficiently resembles the registered owner’s mark, there cannot be a finding of deceptive similarity. To consider otherwise would be for the tail to wag the dog

451    The Full Court in Allergan found that while consumers would not have confused the words or names PROTOX for BOTOX, or thought that the PROTOX branded anti-wrinkle topical cream was the same as the BOTOX branded anti-wrinkle (botulinum toxin) injection, the similarity between the marks would cause consumers to wonder whether the products came from the same source, and as such there was infringement of Allergan’s registered trade mark BOTOX pursuant to section 120(1) of the Act.

452    Full Court at [24] found:

Deceptive similarity raises, as a central question, whether there is a real risk that the consequence of use of the allegedly infringing mark would result in persons being caused to wonder whether it might not be the case that the products in respect of which the mark is used come from the same source as products the subject of the mark said to be infringed

453    The Full Court in Allergan at [28] reiterated that the “confusion” to which the relevant provisions of the Act are directed is confusion as to the source of the products as opposed to confusion between the marks or products themselves.

Application to the facts

Non-infringing Signs

454    Having regard to the evidence before me, I do not consider the “1300HENLEY” sign (at reference F), or the use of the various number plates (at reference L) in the Particulars Table to be signs used as a trade mark (Non-infringing Signs).

455    The display of the phone word “1300HENLEY” is a contact number, rather than a brand. This is because it provides a method by which persons can contact Henley Constructions. In the context in which it is used, I do not accept that consumers would view this as a brand or a badge of origin.

456    With respect to the licence plates, in my view, a consumer would not view a number plate as projecting a brand or a badge of origin. If anything, a consumer would view a number plate as a way of identifying a vehicle. I am not persuaded that the use of “HENLY” or “HNLY” on a number plate entailed trade mark use.

Infringing Signs

457    Having considered the Non-Infringing Signs directly above, I am satisfied on the evidence that Henley Constructions has used the other signs that are set out in the Particulars Table as trade marks for its building and construction services in a manner which infringes each of Henley Arch’s relevant registered marks pursuant to s 120(1) of the TMA (Infringing Signs). I am of that opinion for the reasons that follow.

Use of the Infringing Signs as trade marks for building and construction services

458    In order for trade mark infringement to be made out under s 120 of the TMA, it is necessary to establish that the Infringing Signs have been used in the course of trade, and further, that the Infringing Signs were used in relation to similar or identical goods or services to those which are provided by the owner of the registered trade mark. In my view, it is uncontroversial that the Infringing Signs were used as trade marks in the provision of building and construction services.

459    While Henley Constructions admitted that it has used the “HENLEY CONTRUCTIONS” mark at reference D in the Particulars Table as a trade mark, it has otherwise denied that it used the other marks as trade marks for building and construction services. I find that Henley Constructions has used all of the Infringing Signs as trade marks for the reasons that follow.

460    As a general observation, each of the Infringing Signs has been used in relation to either the provision of Henley Constructions’ building and construction services or the promotion of Henley Constructions’ building and construction services in a manner which would lead a person viewing these signs to identify them as a badges of origin of those services.

461    I have formed this view essentially for the reasons submitted in Henley Arch’s submissions. In particular:

(1)    The first Henley Constructions logo has been used on Henley Constructions website and on signage at various developments undertaken by Henley Constructions in Sydney.

(2)    The domain name henleyconstructions.com.au has been used in various marketing materials, including on business cards, on Instagram and on Facebook in relation to Henley Constructions’ business.

(3)    The second Henley Constructions logo has similarly been used on Henley Constructions website and in marketing materials for its property developments, such as the Aperture Apartments in Marrickville.

(4)    The phrase “Henley Constructions” and “Henley” has been used by Henley Constructions in newspaper advertisements, on Facebook, on specific websites developed for particular property development projects and on the website www.henleygallery.com.au.

(5)    It is plain that the third Henley Constructions logo has been used as a trade mark. It is used on various fencing which surrounds several of Henley Constructions’ development sites. It has also been used on Facebook and Instagram. The use of the word “Henley” on cranes at various Henley Constructions’ development sites falls into the same category. Each of these logos appears at various construction sites operated by Henley Constructions as signage, hoardings, on email signatures and on various vehicles. In this context, it is clear that these logos have been used in the course of trade and as a means of portraying its brand within the building and construction services to any person that views these signs.

(6)    I have also reviewed photographs of the Henley Display Gallery, and I consider the use of the word Henley on this display gallery is used to distinguish the display gallery as a Henley Constructions badge of origin, indicating a connection between the units constructed by Henley Constructions, the word “Henley”, and Henley Constructions.

(7)    In my view, the use of the various “hashtags” set out in Henley Arch’s relevant particulars are trade mark use. They are a modern way of distinguishing a particular brand on social media platforms. That is how they have been used by Henley Constructions. Hashtags have become a recognised symbol and therefore they have a meaning to the general public. In most cases, if the words that follow the hashtag symbol, “#” are recognised as a trade mark, the addition of the “#” symbol would lead a person viewing these signs to identify them as badges of origin of Henley Arch. I accept that the use of the hashtags #henleyconstructions”, “#henleygallery”, “#henley”, have been used by Henley Constructions on its social media platforms to promote its work within the building and construction space, and have been used in the course of promoting its building and construction brand.

(8)    Lastly, with respect to the use of “Henley” solus (or what has, at times been referred to by the parties as the “HENLEY” trade mark, such as in the parties amended consolidated statement of issues dated 31 March 2021 at issue 1), I accept that Henley Constructions has used “Henley” solus as a trade mark, in a number of applications, including where Henley Constructions referred to itself as “Henley” on its website, where this sign was used at a number of building sites, and where this sign was also affixed to cranes at those locations. The use of this sign occurred in the context of advertising or promoting its building and construction services on a range of projects and can be said to be used as a trade mark in the course of trade.

462    The fact that those signs are often (but not always) used in conjunction with other Henley Constructions signs does not dilute the trade mark significance that attaches to those signs because such use is not directly side-by-side so as to suggest the signs are used collectively as a single mark as was the case in Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at [132] (Sports Warehouse) per Kenny J. Instead, each sign appears in its own context and is used separately to identify the origin of the services.

463    I am satisfied on the evidence and I find that Henley Constructions has used the Infringing Signs as trade marks. That is, Henley Constructions has used, and uses the Infringing Signs as a badge of origin to distinguish its building and construction services from other building and construction businesses’ services. In this respect, Henley Arch’s submissions should be accepted.

464    I find that a consumer of building and construction services observing the Infringing Signs on hoardings at Henley Constructions building sites, on promotional material distributed by Henley Constructions and on its websites and social medial platforms which include Facebook and Instagram, would distinguish the building and construction services of Henley Constructions from other builders.

465    Lastly, in respect of each of the Infringing Signs, in my view, Infringing Signs are plainly only used in respect of building and construction services. Those services include building and construction of apartments, apartment buildings, single dwelling homes and building and construction services in the nature of renovations and alterations of those kinds of buildings.

Infringing Signs found to be substantially identical or deceptively similar

Substantially identical

466    As has been outlined above, a finding of trade mark infringement, where marks are alleged to be substantially identical, requires a side-by-side analysis to assess the similarities and differences of the signs, taking into account the essential features of the signs and the total impression of the resemblance or dissimilarity that emerges from the comparison: per Windeyer J in Shell at p 414. The Full Court clarified that this is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them: Pham Global at [52].

467    Before beginning my analysis of the relevant Infringing Signs which Henley Arch alleges to be substantially identical with a certain number of its trade marks, it is beneficial to clarify certain admissions made by Henley Constructions again at this point.

468    Henley Constructions has admitted that its use of the name “Henley” solus is substantially identical to Henley Arch’s “HENLEY” mark (registration 1152820). It is therefore not necessary to consider this issue with respect to these marks.

469    Henley Arch submits that the “HENLEY CONSTRUCTIONS” mark is substantially identical to Henley Arch’s “HENLEY” trade mark, as well as its “HENLEY PROPERTIES” Device Mark. Henley Constructions has denied these allegations.

470    I find that the “HENLEY CONSTRUCTIONS” mark is substantially identical to Henley Arch’s “HENLEY” trade mark, as well as its “HENLEY PROPERTIES” Device Mark for the reasons that follow.

The “HENLEY CONTRUCTIONS” mark

471    Henley Arch contends that the “HENLEY CONSTRUCTIONS” mark is substantially identical to each of the HENLEY mark and the HENLEY PROPERTIES Device Mark because the differences between the marks do not substantially affect the identity of the mark, and that when viewed within the context of building and construction services, those marks will be found to be substantially identical.

472    I find on the evidence that the “HENLEY CONTRUCTIONS” mark is substantially identical to the Henley Mark. When viewed side-by-side, it is apparent, in my view, that the essential features of the “HENLEY CONSTRUCTIONS” mark show a clear resemblance to the “HENLEY” mark. The word “Henleyis the same in both marks and is an essential feature of these marks, and adopting the language in Accor at [206] the word “Henley” is the “dominant cognitive cue” and in both marks these are substantially identical.

473    As to the “HENLEY PROPERTIES” Device Mark, I find on the evidence that the “HENLEY PROPERTIES” Device Mark is also substantially identical to the “HENLEY CONSTRUCTIONS” mark, and I adopt the same reasoning for this mark as I have done in the mark above.

474    While Henley Constructions has submitted that, when applying the side-by-side comparison to these marks, where an essential feature or dominant cognitive cue is absent in one mark and present in the other the two marks, and where Henley Constructions alleges that the “prominent graphic device” would inhibit a finding that the marks can be considered substantially identical. I reject this submission.

475    Notwithstanding that Henley Constructions has, in its submissions, conflated the two Henley Arch marks above, where at [140] in its closing defence submissions it has identified that there is a “prominent graphic device in the HP and Device Trade Mark that is absent from HENLEY CONSTRUCTIONS, where, what it has referred to as the “HP and Device Trade Mark” seemingly is the “HENLEY PROPERTIES” Device Mark, in circumstances where the “HENLEY” mark does not contain an image or any device that can be said to be a “prominent graphic”. In my view, the dominant cognitive cue does not turn on the device that is apparent in the “HENLEY PROPERTIES” Device Mark, rather, as identified above, the name “Henley” that appears in these marks is what draws the viewer of these signs to see these marks as substantially identical and is the dominant cognitive cue, or essential feature of these marks.

Deceptively similar

476    A finding of trade mark infringement is also made out where the signs are found to be deceptively similar. A finding of this kind, does not require a side-by-side comparison of the marks, rather, when assessing deceptive similarity, what is relevant, is the overall effect or impression that the trade marks will have on potential customers, and whether this resemblance is likely to deceive or cause confusion to those customers: Shell at p 416; Australian Woollen Mills at [658].

477    While Henley Constructions has admitted that the “HENLEY CONTRUCTIONS” mark at reference D in the Particulars Table is deceptively similar to Henley Arch’s “HENLEY” mark (1152820), and also that the use of the name “Henley” is deceptively similar to Henley Arch’s “HENLEY” mark, Henley Constructions has denied that any of its other marks outlined in the Particulars Table are deceptively similar.

478    I will outline why I find each of the Infringing Signs are deceptively similar to each of the Henley Arch registered trade marks below. In doing so, I will adopt the trade marks that Henley Arch alleges have been infringed as headings below and identify the reasons why Henley Constructions’ Infringing Signs are deceptively similar to Henley Arch’s marks.

The “HENLEY PROPERTIESDevice Mark

479    As to the deceptive similarity between the “HENLEY CONSTRUCTIONS” sign and the “HENLEY PROPERTIES” Device Mark, I am satisfied that these marks are deceptively similar. The HENLEY PROPERTIES Device Mark comprises a triangular device, the prominent word “Henley” and “properties” in smaller font underneath. As to the word parts of the mark, “Henley” is emphasised considerably, and the word “properties” is descriptive of building and construction services. The first word “Henley” is given prominence by being the first word and the word “Constructions” is purely descriptive of building and construction services, and, as a result, it is the word “Henley” that is distinctive. A consumer with an imperfect recollection is most likely to focus on the word “Henley” as being prominent and also distinctive of the origin of the building and construction services being provided. As a consequence, the word “Henley” appearing in each of the two marks makes them, in my opinion, deceptively similar. In these circumstances, it is my view, that “a number of persons will be caused to wonder whether it might not be the case that” building and construction services provided under the Henley Constructions mark came from the same source as those provided under the HENLEY PROPERTIES Device Mark (and the same reasoning applies to #henleyconstructions and henleyconstructions.com.au).

480    With respect to the HENLEY PROPERTIES Device Mark and the other Infringing Signs used by Henley Constructions, these signs all incorporate the word “Henley” alone as the key memorable feature. In my view, it is plain that a number of persons will be caused to wonder whether it might not be the case that building and construction services provided under these various Henley Constructions “Henley” signs came from the same source as those provided under the HENLEY PROPERTIES Device Mark.

481    I reject Henley Constructions’ submission that there is no deceptive similarity because the only common element between the two marks is HENLEY, which is both a common surname and geographic location in Sydney, and that it also features as part of the name of locations in South Australia (Henley Beach and Henley South Beach) and Western Australia (Henley Brook), and therefore has a degree of commonality in the eyes of consumers. I do not accept that the localities that Henley Constructions referred to are so prominent that they have the commonality in the eyes of consumers submitted by Henley Constructions. I was not referred to any evidence to support the contention that consumers associate the word “Henley” with those localities. Additionally, in my view, the impression, based on recollection, of the HENLEY PROPERTIES Device Mark, that persons of ordinary intelligence and memory would have, is that Henley Arch is a building company. I believe such persons would be left with the same impression on viewing Henley Constructions’ signs. This flows in particular from both entities using the word “Henley” and similar words for similar services, being “properties” and “constructions”. I am not persuaded that a person viewing the HENLEY PROPERTIES Device Mark or the Henley Constructions signs would associate those signs with the localities referred to by Henley Constructions. However, I do accept that traders (being distinct from consumers) located in these relevant localities (ie Henley in Sydney, Henley Beach, Henley South Beach and Henley Brook) may wish to relevantly use “Henley” as a name for their services. I return to this matter later in these Reasons.

The “HENLEY WORLD OF HOMES” mark

482    In respect of the HENLEY WORLD OF HOMES mark: The phrase “world of homes” has been used in the mark descriptively for building and construction services that Henley Arch is offering, being a “world of homes” to choose from. A consumer of building services with an imperfect recollection, observing the mark HENLEY WORLD OF HOMES, is likely to be left with the impression that the builder, Henley Arch, uses the brand “Henley” to promote its “world of homes”. In this way, the dominant memorable feature is the word “Henley”. The addition of the phrase “world of homes” does not remove the likelihood that a consumer would be confused or “caused to wonder” whether there is some association between Henley World of Homes and the prominent use of “Henley” in the Infringing Signs.

483    I accept Henley Arch’s submission that each of the Infringing Signs is deceptively similar to HENLEY WORLD OF HOMES predominantly because each of the Henley Constructions signs has, a dominant memorable feature, the word “Henley” alone or with additions or alterations that do not distinguish the marks in a way which would remove the likelihood of confusion or cause to wonder.

484    I do not accept Henley Constructions’ submission that analysing HENLEY WORLD OF HOMES in this way entails disregarding the highly distinctive WORLD OF HOMES element and treating the mark as Henley” solus. In my view, given HENLEY WORLD OF HOMES is not, on its own, grammatically accurate, the more likely impression left by it, is that there is a builder with the umbrella brand “HENLEY” that uses the brand HENLEY with the tag line WORLD OF HOMES.

485    In light of the above, each of the Infringing Signs is deceptively similar to the “HENLEY WORLD OF HOMES” predominantly because each of the Infringing Signs has, as a dominant memorable feature, the word “Henley” alone or with additions or alterations that do not distinguish the marks in a way which would remove the likelihood of confusion “cause to wonder”.

The “HENLEY ESSENCE, “HENLEY RESERVE” and “HENLEY COLLECTION” marks

486    In respect of Henley Arch’s registered marks HENLEY COLLECTION, HENLEY RESERVE and HENLEY ESSENCE, each mark is dominated visually by the word “Henley”, it being the first and distinctive word in the mark followed by a descriptive term such as “Collection” being descriptive of building and construction services such as a collection of homes.

487    Noting this, “Henley with the descriptive term “Reserve” refers to building and construction services which are special. Henley with the descriptive term “Essence” refers to the essence or essential building and construction services. As a consequence, as Henley Arch submits, each of the Infringing Signs is deceptively similar to each of the HENLEY COLLECTION, HENLEY RESERVE and HENLEY ESSENCE signs predominantly because each of the Infringing Signs has, as a dominant memorable feature, the word “Henley” alone or with additions or alterations that do not distinguish the marks in a way which would remove the likelihood of confusion or cause to wonder.

488    I also agree with Henley Arch’s submission that there is even less distinction between the Infringing Signs that include or comprise the words “Henley Constructions” and HENLEY COLLECTION, given the visual and aural similarity between the words “Constructions” and “Collection”.

489    In light of the Full Court’s recent findings in Allergen, the correct question to be answered is whether the similarity between the Infringing Signs and the relevant Henley Arch marks would cause consumers to wonder whether the source of the services to which those marks are applied, is the same. In my view it is the case that consumers would be caused to wonder whether the enterprise behind the single dwelling home building services provided under Henley Arch’s registered marks had decided to expand into building the apartment blocks under the various impugned signs used by Henley Constructions. As such, and in accordance with my findings above, I am of the view that the Infringing Signs are deceptively similar and amount to trade mark infringement under s 120 of the TMA.

Summary on trade mark infringement

490    For the reasons given, by using the Infringing Signs in the manner set out in the Particulars Table:

(1)    Henley Constructions has used the Infringing Signs in the course of trade as a trade mark;

(2)    Henley Constructions has used the Infringing Signs in relation to building and construction services;

(3)    those signs are, as outlined above, either substantially identical, or deceptively similar, to each of Henley Arch’s registered marks (being Australian registered trade mark numbers 1152820, 1152818, 1152819, 1806558, 1806561 and 1806570); and

(4)    as a result, Henley Constructions has infringed those registered marks pursuant to s 120(1) of the TMA, subject to any defence Henley Constructions may establish.

AUSTRALIAN CONSUMER LAW

491    Henley Arch contends that Henley Constructions’ conduct in promoting itself using the names HENLEY CONSTRUCTIONS and Henley” (including as part of signs that incorporate one or both of those names) is misleading or deceptive in contravention of s 18 of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL), and comprises various misrepresentations contrary to ss 29(1)(g) and 29(1)(h) of the ACL.

492    Section 18(1) of the ACL provides that “[a] person must not, in trade or commerce, engage in conduct which is misleading or deceptive or likely to mislead or deceive.” Henley Arch also relies on ss 29(1)(g) and (h) of the ACL, which states that:

(1)    A person must not in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods  or services:

(g)  make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

(h)  make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;

493    It should be noted that there is no material difference between the terms “false or misleading” (as used in s 29 of the ACL) and “misleading or deceptive” (as used in s 18 of the ACL). In Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130; 278 FCR 450, the Full Court stated at [20]-[21]:

It can be seen that s 18 prohibits conduct that is misleading or deceptive or likely to mislead or deceive, whereas s 29 prohibits the making of a false or misleading representation. Conduct that contravenes s 18 may involve, but need not involve, the making of a false or misleading representation …

Although s 18 takes a different form to s 29, the prohibitions are similar in nature. Whilst s 29 uses the phrase “false or misleading” rather than “misleading or deceptive”, it has been said that there is no material difference in the two expressions …

(Citations omitted.)

494    Henley Arch accepts that, if the Court finds that there is no contravention of s 18 of the ACL in circumstances such as these, there will be no contravention of ss 29(g) and 29(h) of the ACL.

495    The ACL replaced the consumer protection provisions of the Trade Practices Act 1974 (Cth) (TPA), which operated until 1 January 2010. Section 18 of the ACL precisely mirrors s 52 of the TPA, and likewise the provisions of ss 29(1)(g) and 29(1)(h) of the ACL precisely mirrors ss 53(c) and 53(d) of the TPA. As such, there is no material difference if a finding is made that Henley Constructions has breached these provisions, whether under the ACL or TPA, as these provisions have not changed and the consequence of a breach would have the same effect, regardless of which act was in force during the relevant period.

Henley Arch’s submissions

Relevant date for assessing reputation

496    Henley Arch submits that the relevant date for assessing reputation was the date Henley Constructions first commenced using its name on invoices to GSW Pty Ltd in February 2007. Alternatively, Henley Arch submits that there was a significant change in conduct in about 2017, such that the relevant date resets to that time.

497    Henley Arch submits that, as at both February 2007 and February 2017, Henley Arch had a significant reputation throughout Australia under, and by reference to, the “Henley” brand, through extensive promotion and use of the names Henley” and HENLEY PROPERTIES in respect of building and construction services.

498    Henley Constructions accepts that Henley Arch, at all relevant times, has had a significant reputation in “Henley” in at least Victoria in respect of the building and construction of single detached houses and townhouses. Henley Constructions contends that Henley Arch’s reputation is limited in two ways. First, it says Henley Arch’s reputation does not extend to building homes in New South Wales. Second, it says Henley Arch’s reputation does not extend to the construction of multi-dwelling residential apartment buildings.

499    Henley Arch submits that it needs only to establish a reputation among the relevant public likely to be affected by the conduct which includes (but is not limited to) consumers in Victoria who are only aware of Henley Arch’s construction of single detached houses and townhouses in Victoria.

Henley Arch’s reputation

500    Henley Arch submits that a person located in Victoria, who is familiar with Henley Arch’s construction of single dwelling homes under the name “Henley”, could come across the Henley Constructions website or see an advertisement for the construction of a Henley Constructions build of an apartment building in New South Wales and be led to consider purchasing an apartment in that development on the basis of Henley Arch’s reputation in Victoria. Henley Arch submits that the evidence from Mr Harvey is that investors in Australia commonly purchase property located in a different State to where they reside. Henley Arch submits that Mr Harvey’s evidence on this point was not challenged and there was no evidence to the contrary.

Henley Arch’s reputation in NSW

501    Henley Arch relies upon the following evidence to contend that Henley Arch’s reputation does extend into New South Wales and did so as at February 2007 and February 2017.

502    First, Henley Arch submits that, since around 2003, Henley Arch has projected the “Henley” brand and its building and construction services via its website, www.henley.com.au, to consumers throughout Australia (including in New South Wales) and has promoted that website address in its other marketing materials including brochures.

503    Second, Henley Arch submits that, at all relevant times, Henley Arch has built homes located in Victoria under the names Henley” and Henley Properties for customers located in New South Wales.

504    Third, Henley Arch submits that it has built homes in New South Wales under the names Henley” and Henley Properties” from 1995 to 2000, and thereafter continued to supply existing customers with building and construction services in respect of homes in New South Wales and for new “spec” homes under the Henley brand until around 2010.

505    Henley Arch relies upon Mr Harvey’s evidence that the building and construction industry in Australia is a national industry. Henley Arch points to Mr Harvey’s evidence that Henley Arch builds homes in Victoria for investors located outside Victoria, including overseas investors who never visited Victoria duri