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

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

The Court found that Henley Constructions infringed Henley Arch’s registered trade marks by using 'Henley', 'Henley Constructions', and related branding as badges of origin for building and construction services in a manner that was substantially identical or deceptively similar to Henley Arch’s marks. Henley Constructions’ use was held not to be in good faith, as it had actual knowledge of Henley Arch’s marks at the time of adoption and did not take reasonable steps to avoid confusion. The Court also held that Henley Constructions’ conduct amounted to misleading or deceptive conduct contrary to the Australian Consumer Law, and none of Henley Constructions’ statutory defences to...

Jurisdiction
Australia
Judgment Date
05 November 2021
Procedural Posture
First Instance (trial, Including Cross Claim and Applications) / Final Judgment and Orders After Hearing
Outcome
Judgment for Henley Arch. Declarations made. Henley Constructions and Mr Sarkis restrained from trade mark infringement and misleading/deceptive conduct. Directions for further orders (including timetable/account of profits claim) to be provided.
Legal Topics
['trade Marks—infringement' 'australian Consumer Law—misleading/deceptive Conduct' 'trade Mark Registration—distinctiveness' 'defences to Trade Mark Infringement' 'cross Claim for Cancellation or Limitation of Registered Marks']
['intellectual Property' 'consumer Law'] ['trade Marks—infringement' 'australian Consumer Law—misleading/deceptive Conduct' 'trade Mark Registration—distinctiveness' 'defences to Trade Mark Infringement' 'cross Claim for Cancellation or Limitation of Registered Marks']

Case Brief

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Procedural Posture

First Instance (trial, Including Cross Claim and Applications) / Final Judgment and Orders After Hearing

Legal Issues

  1. 1 ["Whether Henley Constructions infringed Henley Arch's registered trade marks under s 120(1) Trade Marks Act 1995 (Cth)" 'Whether Henley Constructions contravened ss 18, 29(1)(g), 29(1)(h) of the Australian Consumer Law' 'Whether any defences under s 122(1)(fa), s 122(1)(a)(i), or s 124 of the Trade Marks Act 1995 (Cth) apply' "Whether Henley Constructions' cross-claim for rectification or cancellation of Henley Arch’s trade marks succeeds" 'Whether second respondent (Sarkis) is jointly liable']

Ratio Decidendi

The Court found that Henley Constructions infringed Henley Arch’s registered trade marks by using 'Henley', 'Henley Constructions', and related branding as badges of origin for building and construction services in a manner that was substantially identical or deceptively similar to Henley Arch’s marks. Henley Constructions’ use was held not to be in good faith, as it had actual knowledge of Henley Arch’s marks at the time of adoption and did not take reasonable steps to avoid confusion. The Court also held that Henley Constructions’ conduct amounted to misleading or deceptive conduct contrary to the Australian Consumer Law, and none of Henley Constructions’ statutory defences to...

Court Disposition

Judgment for Henley Arch. Declarations made. Henley Constructions and Mr Sarkis restrained from trade mark infringement and misleading/deceptive conduct. Directions for further orders (including timetable/account of profits claim) to be provided.

Orders

  • ["Henley Constructions and Mr Sarkis permanently restrained from using 'Henley', 'Henley Constructions', and related signs as trade marks for building and construction services." "Declarations of infringement of Henley Arch's registered trade marks and contraventions of ss 18, 29(1)(g), 29(1)(h) of the ACL (and ss...