Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100

Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100

ESTABLISHMENT as a trade mark was sufficiently distinctive as at the priority date due to extensive use and reputation. The prior traders' marks were not substantially identical, and their rights had been abandoned. ESTABLISHMENT 203 was deceptively similar despite the addition of '203', as the main element remained and the suffix would not negate confusion for the notional consumer. The respondent could not rely on the good faith own-name defence due to failure to conduct searches and its conduct after receiving notice. The respondent's use resulted in misleading or deceptive conduct in breach of the ACL, as there was a real likelihood of consumers associating the respondent's business...

Parties
Applicant/cross Respondent: Hemmes Trading Pty Limited; Respondent/cross Claimant: Establishment 203 Pty Ltd
Jurisdiction
Australia
Judgment Date
20 September 2024
Procedural Posture
Intellectual Property Trade Mark and Consumer Law Proceedings (with Cross Claim for Cancellation) / Final Judgment Following a Trial
Outcome
Applicant's claim allowed. Respondent's cross-claim dismissed. Injunction granted with 30 days' grace. Additional damages not awarded. Costs to applicant.
Legal Topics
Trade Marks – Distinctiveness and Deceptive Similarity, Trade Mark Infringement, Defence of Good Faith Use of Own Name, Australian Consumer Law – Misleading or Deceptive Conduct, Cross Claim for Cancellation of Registration
Intellectual Property Consumer Law Trade Marks – Distinctiveness and Deceptive Similarity Trade Mark Infringement Defence of Good Faith Use of Own Name Australian Consumer Law – Misleading or Deceptive Conduct Cross Claim for Cancellation of Registration

Case Brief

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Parties

Hemmes Trading Pty Limited

Applicant/cross Respondent

Establishment 203 Pty Ltd

Respondent/cross Claimant

Procedural Posture

Intellectual Property Trade Mark and Consumer Law Proceedings (with Cross Claim for Cancellation) / Final Judgment Following a Trial

Legal Issues

  1. 1 Whether the ESTABLISHMENT trade mark should be cancelled for lack of distinctiveness or non-ownership under Trade Marks Act 1995 (Cth) sections 41 and 58
  2. 2 Whether ESTABLISHMENT 203 is deceptively similar to ESTABLISHMENT under s 120(1) of the Trade Marks Act
  3. 3 Whether the respondent can rely on the defence of good faith use of its own name under s 122(1)(a) of the Trade Marks Act

Ratio Decidendi

ESTABLISHMENT as a trade mark was sufficiently distinctive as at the priority date due to extensive use and reputation. The prior traders' marks were not substantially identical, and their rights had been abandoned. ESTABLISHMENT 203 was deceptively similar despite the addition of '203', as the main element remained and the suffix would not negate confusion for the notional consumer. The respondent could not rely on the good faith own-name defence due to failure to conduct searches and its conduct after receiving notice. The respondent's use resulted in misleading or deceptive conduct in breach of the ACL, as there was a real likelihood of consumers associating the respondent's business...

Court Disposition

Applicant's claim allowed. Respondent's cross-claim dismissed. Injunction granted with 30 days' grace. Additional damages not awarded. Costs to applicant.

Orders

  • Declaration of infringement of trade mark no. 876753 (ESTABLISHMENT) and contravention of ACL ss 18, 29
  • Respondent permanently restrained from using ESTABLISHMENT 203 or substantially identical marks in relation to restaurant, café, bar, hotel or function services (effective after 30 days)