Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369 | Case summary

Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369 | Case summary | Zoe

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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 Nature's 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

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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.

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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

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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").

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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

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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

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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

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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. …

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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.

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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.

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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.

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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.

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Cross-examination of Ms Lawrence 118 In cross-examination, Ms Lawrence was referred to the following photograph (which was annexed to the TMIS report dated 11 August 2017 (referred to above)): 119 Ms Lawrence was asked what the purpose was of putting this photograph into evidence. Ms Lawrence said that Henley Arch put into evidence everything that showed a reference to the place of business for Henley Constructions and also how that name was being used. Ms Lawrence said she did not give specific thought as to whether the purpose of putting this photograph into evidence was to show trade mark use. However, Ms Lawrence said that this page of the TMIS report was put into evidence "to address trade mark use". 120 Ms Lawrence was then taken to the following photograph which was attached to the TMIS report: 121 This is a photo of the door of Henley Constructions' business premises. Ms Lawrence noted that this door used the Henley Constructions logo and used the telephone number "1300 Henley". Ms Lawrence was asked what she noticed about that telephone number and Ms Lawrence said that it "had the word "Henley" in it", and that looked to Ms Lawrence like trade mark use. As to the website on this door, www.henleyconstructions.com.au, Ms Lawrence said that a website address can function as a trade mark. Ms Lawrence said that she considered these features on this door were evidence of trade mark use. 122 Ms Lawrence was also taken to a brochure where Henley Constructions referred to itself as "Henley". Ms Lawrence said that there were a number of examples of the use of this name which appeared to her to constitute trade mark usage. Ms Lawrence was also referred to Mr Sarkis's business card, which contained contact details such as "1300 Henley" and the email address "@henleyconstructions.com.au". Ms Lawrence said that these matters were also potentially trade mark use. Ms Lawrence said that, in the context of these details being on a business card, those contact details appeared to be "projecting the brand" of Henley Constructions. However, Ms Lawrence conceded that she was "less certain" as to whether the email address constituted trade mark usage. In contrast, Ms Lawrence considered the use of the word "Henley" in the "1300 Henley" telephone number to be "quite prominent". 123 Ms Lawrence was taken to a number of snapshots, of the Henley Constructions website at various dates, which were annexed to the First Lawrence Affidavit. Ms Lawrence, in particular, was taken to a snapshot of the Henley Constructions website as at 4 February 2017. Ms Lawrence said that the purpose of putting this snapshot of the website into evidence was to demonstrate that there had been a "change or a ramping up of the website" in about 2017. By "ramping up", Ms Lawrence said that she meant the use of the Henley Constructions website was becoming more extensive. That is, there was more content shown on the website. As to the trade mark usage on these websites, Ms Lawrence said that the use of the Henley Constructions mark on the website and the website address (www.henleyconstructions.com.au) were examples of trade mark usage. Ms Lawrence also said that the use of the word "Henley" in narrative or descriptive parts of the website (such as "Henley prides itself on delivering projects both on schedule and within budget") were also examples of trade mark usage. 124 Ms Lawrence was also taken to the following photograph, which appeared on the Henley Constructions website as at 18 February 2017: 125 Ms Lawrence noted that this use of the word "Henley" on the frontage the building pictured above appeared to be trade mark use. It was put to Ms Lawrence that the name of the building is in fact "Henley". Ms Lawrence said that, at the time this photograph was included in her affidavit evidence, she was not aware that the relevant building was in fact called "Henley". Ms Lawrence accepted that, in those circumstances, the use of the word "Henley" on this building was not trade mark usage. 126 Ms Lawrence was then referred to the various Google Maps photographs annexed to the Second Lawrence Affidavit. Those photographs showed Henley Constructions' various projects approximately before and after the commencement and completion of the relevant project. Ms Lawrence confirmed that a purpose of conducting these Google Maps searches was to identify whether or not Henley Constructions had used any relevant branding on the relevant construction sites during the development of those projects. 127 Ms Lawrence was, in particular, taken to annexure "JML-38" to the Second Lawrence Affidavit, being a Google Maps screenshot of the "Church Street project" by Henley Constructions in November 2007. That screenshot did not appear to contain any obvious Henley Constructions signage. However, a Google Maps photograph identified by Henley Constructions' solicitors, being Exhibit R1, was put to Ms Lawrence and, in Exhibit R1, it can be seen that, as at November 2007, the Church Street project had a small sign erected which stated "Henley Constructions". Ms Lawrence said she did not know why the image depicted in Exhibit R1 was not annexed to her affidavit. 128 Ms Lawrence was also taken to various photographs that were taken by Mr Sarkis or other employees of Henley Constructions, and which were tendered as Exhibit R22. Those photographs depicted the various projects that were also depicted in the Google Maps photographs annexed to Ms Lawrence's affidavit. It can be seen from the photographs in Exhibit R22 that Henley Constructions signage was affixed to the fencing or hoarding which was erected around those developments. 129 Ms Lawrence was taken to annexure "JML-47" to the Second Lawrence Affidavit, which were Google Maps photographs of 203 Birdwood Road, Georges Hall, New South Wales. There was limited Henley Constructions signage visible in these photographs. However, tendered as Exhibit R2 was a Google Maps photograph of 201 Birdwood Road, Georges Hall, New South Wales and, in Exhibit R2, it can be seen that the relevant building depicted has Henley Constructions signage affixed to it. The same position also arises when one compares the Google Maps photographs annexed as "JML-48" to the Second Lawrence Affidavit and the Google Maps screenshot tendered as Exhibit R3. That is, the photographs of the development at 59-65 Chester Avenue, Maroubra, New South Wales shown in annexure "JML-48" do not depict Henley Constructions signage, whereas signage depicting the Henley Constructions device mark is visible in the Google Maps photograph tendered as Exhibit R3. That position also arises in relation to the Google Maps photographs annexed as "JML-47" and the Google Maps photographs tendered as Exhibit R4, which concern 9 Wrights Road Drummoyne, New South Wales. It should however be noted that the Google Maps photograph depicted in Exhibit R4, which was put to Ms Lawrence in cross-examination, is a Google Maps photograph taken in November 2019, and is dated after Ms Lawrence affirmed the Second Lawrence Affidavit on 31 October 2019. 130 Ms Lawrence was then cross-examined concerning aspects of the Second Lawrence Affidavit. In the Second Lawrence Affidavit, by reference to Ms Lawrence's own experience as a trade mark lawyer in Australia, Ms Lawrence set out her views as to the appropriate searches that should be undertaken to assess trade mark availability. Ms Lawrence did not accept that many new businesses turn to their accountants as trusted advisors to deal with all compliance and naming issues in relation to the creation of new businesses. In this respect, Ms Lawrence was taken to Exhibit R5, being a page from IP Australia's website titled "The importance of IP for Accountants and their clients" dated 27 February 2018. Ms Lawrence said that she had experience advising clients that might be described as small business operators. Ms Lawrence said this experience was more common approximately 10 years ago or in the early 2000s. Ms Lawrence said she did not recall at that time whether or not there was a degree of confusion on the part of small clients as to the role of company names, business names and trade marks. 131 As stated above, with respect to the searches which Ms Lawrence typically recommended when providing trade mark availability advice, Ms Lawrence said that a search of the trade mark register would be the "first point of call". In the Second Lawrence Affidavit, Ms Lawrence set out the "bare minimum" searches Ms Lawrence would conduct to identify "common law" trade marks. It was put to Ms Lawrence that these searches in fact represented the "gold standard" of searching that Ms Lawrence recommends to clients. Ms Lawrence said that those are the searches that would be recommended as a bare minimum. Ms Lawrence said that, even in the early 2000s, Ms Lawrence had clients that performed at least Google searches before seeking advice from Ms Lawrence. As stated above, I accept Ms Lawrence's evidence that the searches referred to in Ms Lawrence's affidavit are the typical searches which she would have conducted in December 2006 to ascertain whether the trade mark Henley Constructions or Henley was available. I expressly reject the proposition put to Ms Lawrence in cross-examination that a less sophisticated business or a small business seeking to ascertain the availability of a trade mark would not undertake, at least, a Google search or another relevant search of websites

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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.

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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.

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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".

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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.

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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)

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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.

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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.

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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.

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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 …".

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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.

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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.

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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)

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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.

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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.

[58]

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: 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 Early 2009 at 4-6 Marlborough Road, Homebush West, New South Wales; JML-44 Tender Bundle: 2055 (a) Early to mid-2012 at 15-17 Larkin Street, Camperdown, New South Wales; Ex R22 (b) Around March 2015 at 456-458 Gardeners Road, Alexandria, New South Wales; (also at HQ building on door - JML-10 Tender Bundle: 1525-1526) (c) February 2016 at 59-65 Chester Avenue, Maroubra, New South Wales. 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: Building and construction services in respect of a three to five storey multi-dwelling apartment block at the sites it was displayed Ex R22 • Early 2009 at 4-6 Marlborough Road, Homebush West, New South Wales; JML-44 Tender Bundle: 2055 • 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. 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): Building and construction services in respect of apartments at the specified construction project PS-7 Tender Bundle: 4088, 4093, 4099, 4104 • www.aperturemarrickville.com.au PS-10 • at www.thebirdwood.com.au • www.libertysutherland.com.au • from July 2019, www.quartierdrummoyne.com.au 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: 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 (a) At least around June 2017, at the "Aleya" site, at 1 Sparkes Lane, Camperdown, NSW; Ex A19 (b) At least around February 2018, at 233-235 Botany Road, Waterloo, NSW; EX R4 (c) At least from September 2018 to April 2019, at 81-83 Waterloo Road, Punchbowl, NSW; Ex A20 (page 12) (d) At least around September 2020, at the "Chanel" building at 27 Church Street, Camperdown, NSW; JML-47 Tender Bundle: 2080 (e) From at least March 2021, at the "Botany Living" site at 1445-1447 Botany Road, Botany, NSW JML-49 Tender Bundle: 2092, 2093 (f) In around August 2017, at a construction site at 507-509 President Ave, Sutherland, NSW JML-50 Tender Bundle: 2097 (g) In around September 2017, at the "Birdwood" construction site at 203 Birdwood Road, Georges Hall, NSW. JML-51 Tender Bundle: 2104 (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). 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: building and construction services Ex R22 (a) From September 2017, at the "Birdwood" building, at 203 Birdwood Road, Georges Hall, New South Wales; Ex A19 (b) From August 2018, at the "Aleya" building, at 1 Sparkes Lane, Camperdown, New South Wales; Ex R2 (c) From December 2018, at 59-65 Chester Avenue, Maroubra, New South Wales; Ex R3 (d) From August 2019, at the Camperdown "HQ" building, at 128 Parramatta Road, Camperdown, New South Wales; Ex R4 (e) From March 2020, at the "Quartier" building, at 9 Wrights Road, Drummoyne, New South Wales; Ex A20 (pages 2, 3, 5, 10, 14, 15) (f) From July 2020, at the "Noah" building, at Gladesville, New South Wales; JML-91 (g) From October 2020, at the "Chanel" building, at 27 Church Street, Camperdown, New South Wales. 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: Building and construction services at each site and generally for building and construction services Ex R22 (pages 25, 27) (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. 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

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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.

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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.

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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 the "HENLEY 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.

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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.

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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.

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Substantially identical marks HENLEY mark (1152820) 405 Henley Arch submits that Henley Constructions' use of the signs "HENLEY CONSTRUCTIONS" and "Henley" amounts 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).

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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 signs "HENLEY 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.

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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

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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.

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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.

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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.

[77]

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 "Henley" is 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.

[79]

The "HENLEY PROPERTIES" Device 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.

[80]

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".

[81]

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.

[83]

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.

[86]

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 during the process of engaging Henley Arch. 506 Henley Arch submits that the question as to whether the construction industry is a national industry in Australia is not to be determined by the scope of Henley Arch and/or Henley Constructions' respective businesses alone. Henley Arch submits that the building and construction industry in Australia is governed by the NCC which sets out a nationally consistent framework of regulation for the construction of new buildings. 507 Henley Arch submits that modern forms of communication including via the internet and through various social media platforms means that it is likely that activity in one State will result in a "spill over" of reputation in other States. Henley Arch submits that this is particularly so where consumers' expectations are that those activities can be, and are, conducted by the same persons in both States and in the case of at least investors, are used by persons all over the country regardless of where the building occurs. 508 Henley Arch submits that a national market can be proven from the supply side or from the demand side of a market. Henley Arch submits that, from the demand side, a typical person wants a building constructed in a particular geography and Henley Arch provides the ability for people to build a house in Victoria under the "Henley" brand. Henley Arch submits that, when considering the demand side, the relevant question is: to whom are the relevant building services directed? Henley Arch contends that an answer to that question is not limited by geography. Henley Arch submits that Mr Harvey's evidence supports that contention in that Mr Harvey said that consumers of Henley Arch's services can be located anywhere, and not merely in the location where the relevant home is being constructed. In particular, Henley Arch submits that investors (as opposed to owner-occupiers) are not limited at all as to where they might be located. Henley Arch submits, for example, that an investor in New South Wales may wish to invest in the Victorian property market. 509 Henley Arch also submits that a market can be defined by reference to the "supply side". That is, Henley Arch submits that the market could be defined by reference to where suppliers are located and whether or not those suppliers are able to operate on a national basis (because of regulatory requirements or other potential barriers to a national market). Henley Arch submits that, in the building industry, from the supply side, the relevant suppliers (i.e. builders) can and do operate across State boundaries. Henley Arch also submits, as stated above, that consumers (such as investors) also operate across State boundaries. Henley Arch submits that, in these circumstances, the building and construction industry is a national market, not a State-based market. 510 Henley Arch relies upon the evidence of the many thousands of visitors to Henley Arch's website each year who are located in New South Wales. While the Google Analytics data for its website was not available prior to 2013, Henley Arch submits that the Court should infer from the size and consistency of the data over the past eight years that there was a similarly large amount of traffic in 2006 and 2007, including from New South Wales. Henley Arch submits that there is ample evidence in the Google Analytics data after 2013 to satisfy the Court that Henley Arch has a significant reputation in New South Wales from consumers in that State visiting Henley Arch's website. 511 Henley Arch also relies upon the evidence of the 320 homes built in Victoria for customers located in New South Wales prior to and since 2007. If certain anomalous data is excluded (to which I will come to later), Exhibit A23 shows that Henley Arch built 54 such homes prior to 2007, and 138 such homes since 2007.

[89]

Henley Constructions' alleged conduct 514 Henley Arch submits that the evidence discloses that, between February 2007 and February 2017 (Earlier Conduct), alternatively, from February 2017 onwards (Later Conduct), Henley Constructions used the trading signs "HENLEY CONSTRUCTIONS" and "Henley" (including as part of signs that incorporate one or both of those names, which have been outlined in the Particulars Table). 515 Henley Arch submits that, during the Earlier Conduct, there was limited and sporadic use of the signs "HENLEY CONSTRUCTIONS" and "Henley", but that during the Later Conduct there was increasing use of these signs, which stemmed from an increase in advertising on the part of Henley Constructions in promoting its company and its services. 516 Henley Arch submits that this increase in advertising led to it becoming aware of the existence of Henley Constructions in 2017. 517 Henley Arch points to the following matters as evidence of increasing use from 2017: (1) launching a completely re-designed version of the Henley Constructions website with a significantly greater amount of content than appeared previously; (2) re-designing its logo twice, the last being after the letter of demand to Henley Constructions from Henley Arch dated 13 April 2017; (3) commencing using its branding on cranes at its construction sites; (4) commencing promoting itself on Facebook; (5) commencing promoting itself on Instagram; (6) commencing using its branding in the brochures and websites of the developers of Henley Constructions' construction projects; (7) commencing using and promoting the phone number "1300HENLEY" at reference F in the Particulars Table; (8) commencing using its branding on vehicles; (9) commencing using its branding on "hi-vis" vests; (10) commencing permanently fixing its branding to the face of buildings it constructs as "By Henley Constructions" (using the third Henley Constructions logo at reference G in the Particulars Table to the right of the word "By"); (11) commencing the promotion of its construction projects at a display gallery named "The Henley Display Gallery" identified at reference H in the Particulars Table, both physically and at www.henleygallery.com.au; and (12) commencing sponsorship of sporting clubs and community organisations.

[90]

Alleged misrepresentations 518 Henley Arch submits that Henley Constructions' use of the trading names "HENLEY CONSTRUCTIONS" and "Henley" as identified in the preceding 12 matters above, constituted conduct which was misleading, in that Henley Constructions represented that: (a) it is Henley Arch; (b) it is affiliated with Henley Arch; (c) it is sponsored or approved by Henley Arch; (d) its services are provided by, or with the licence or authority of, Henley Arch; (e) its services are affiliated with Henley Arch; and/or (f) its services are sponsored or approved by Henley Arch, (the Representations). 519 Henley Arch submits that by making the Representations, Henley Constructions is in contravention of ss 18 and 29(g) and (h) of the ACL, or alternatively, ss 52, 53(c) and 53(d) of the TPA as it then was. 520 Henley Arch submits that because Henley Constructions has pleaded that the sign "HENLEY CONSTRUCTIONS" is deceptively similar to the name "Henley", it should not be controversial that, provided Henley Arch establishes the requisite reputation in the name "Henley" among the relevant public for the purpose of its ACL claims, Henley Constructions' use of the sign "HENLEY CONSTRUCTIONS" would convey the Representations (which are false). Henley Arch submits that, the addition of the word "Constructions" to the sign "HENLEY CONSTRUCTIONS" would do little to distinguish Henley Constructions' services from those of Henley Arch. Henley Arch submits that the word "Constructions" is directly descriptive of the services being provided, and is unlikely to be given attention by consumers. Henley Arch submits there is no other part of Henley Constructions' branding that would distinguish it in the ordinary consumer's mind from Henley Arch, and that the various stylisations and the device used by Henley Constructions would not overcome any misleading conduct, and at most, might suggest to a consumer that Henley Constructions is a particular division of Henley Arch. 521 Henley Arch submits that, both the Earlier Conduct and the Later Conduct comprise instances of Henley Constructions referring to itself simply as "Henley". That, in Henley Arch's submission, itself indicates that "Henley" is the dominant element of Henley Constructions' branding that consumers would recall.

[92]

Henley Constructions' submissions 523 Henley Constructions denies any contravention of the ACL by its use of the name "HENLEY CONSTRUCTIONS" and "Henley" to promote itself as a "builder of commercial properties and homes in New South Wales". Henley Constructions also denies that the use of the phone number "1300HENLEY" contravenes the ACL. 524 Henley Constructions observes that neither "Henley" solus nor the phone word "1300HENLEY" has been used in isolation. Rather, each has been used in close proximity to the name "Henley Constructions". Henley Constructions submits that, the name "Henley", has merely been used as a truncation of the name "Henley Constructions" and the phone word "1300HENLEY" is a mere contact detail. 525 Henley Constructions submits that the relevant time for determining whether there has been a contravention is at the time the impugned conduct commenced. Henley Constructions submits that it commenced operations in December 2006 when it entered into a contract with a development company to build a multi-dwelling apartment block in Camperdown located in the inner-west of Sydney. 526 Henley Constructions admits that Henley Arch has acquired a reputation in the brand name "Henley" in Victoria. However, Henley Constructions submits that the issue is whether Henley Arch has a reputation in that brand in other States of Australia, most relevantly, in New South Wales. Henley Constructions submits that the evidence put forward by Henley Arch in relation to its building activities in New South Wales is deficient and should not be accepted by the Court as establishing that Henley Arch has a reputation in building houses in New South Wales. Henley Constructions also submits that, insofar as Henley Arch relied upon its website being accessed by people from New South Wales, such evidence is unconvincing and should not be accepted by the Court. 527 Henley Constructions submits that the evidence of Mr Harvey demonstrated that, as at 2006, Henley Arch had a business and marketing strategy that reflected the building market being broken down into State-based markets and not a national market as contended by Henley Arch. Henley Constructions submits that the evidence of Mr Harvey was that Henley Arch had a deliberate branding strategy since 2006 which regarded the State markets as being separate markets. This State-based strategy was also evident, so it was submitted, from the social media platforms used by Plantation Homes in Queensland and Edgewater in New South Wales. 528 Henley Constructions submits that the evidence of Mr Boyer was consistent with State-based markets. Henley Constructions submits that Mr Boyer's evidence was that, despite his knowledge of the Henley Arch business in Victoria, he was not aware of the fact that the Queensland business of Henley Arch, Plantation Homes, was part of the Henley Arch group of businesses nor was he aware of the business of Henley Constructions as at 2017. In this respect, Henley Constructions relied on the following cross-examination of Mr Boyer: … [A]s to your working knowledge outside of Victoria and Tasmania, for example, did it extend to knowledge of builders in New South Wales in 2017?---My recollection is back to that time that yes, I was dealing with builders in New South Wales at the time. … [D]id you know of Edgewater Homes at that time?---I did know, yes. Did you understand that that was a business operated ultimately by Henley Arch or one of its affiliates?---I didn't know at the time, no. And you didn't know of Henley Constructions as at January 2017?---No, I did not. You've not encountered them in the sense of hearing of them when it came to discussing various state markets?---No, I had not. 529 Henley Constructions submits that the evidence of Mr Beccera and Mr Tatian affirmed the position that the building and construction markets are divided into State-based markets. In this respect, Henley Constructions referred to the State-based regulations which were referred to in Mr Becerra's and Mr Tatian's evidence. 530 Henley Constructions submits that Henley Arch's reliance on Pham Global in support of its "spill over reputation argument" is misplaced and that there are important factual distinctions between this case and the facts in Pham Global. In particular, Henley Constructions submits that the finding in Pham Global that radiological services were of a "national nature" was "fundamental to the issue of sufficiency of ICI's reputation across Australia": Pham Global at [71]. Henley Constructions submits that this finding was supported by a strong online presence, inter-state teleradiology and inter-state referrals: Pham Global at [67] and [77]. Henley Constructions submits that the evidence of Mr Harvey makes clear that the housing industry is a State-based market. Henley Constructions says that the Henley Properties Group's branding strategy involved an online presence that is State-based, given the Henley Arch website was directed to the businesses in Victoria, South Australia and Queensland and was not just a Victorian operation, while Plantation Homes and Edgewater have their own websites and each of Henley Arch in Victoria, Edgewater in New South Wales and Plantation Homes in Queensland, had their own online social media platforms. 531 Henley Constructions submits that building and construction services are not cross-border services like teleradiology in the Pham Global case. The evidence, it is submitted, in this case, is that there are various service providers to a building site that are local to the area. Henley Constructions submits that there is no evidence that inter-state referrals were common practice in the building and construction industry. 532 Henley Constructions submits that consumers are unlikely to buy a house built by Henley Arch without visiting a physical Henley Arch property. Henley Constructions submits that evidence of website advertising is therefore of very limited assistance to Henley Arch's case and this is not a case of potential purchasers searching the internet and making a purchase. Henley Constructions submits that Henley Arch has failed to provide any evidence that the popularity of its website by any web users whatsoever, until well after Henley Constructions' adoption and first use of "Henley Constructions". This, it is submitted, is in stark contrast to the position in Pham Global where relevant web user data was critical to establishing the relevant reputation: Pham Global at [77]. 533 Henley Constructions submits that there is no misrepresentation by its use of the name "Henley Constructions" because Henley Constructions has been using its name as a brand in a consistent manner for a number of years and its branding is distinctly different to Henley Arch's. Henley Constructions submits that the promotion of its services is almost exclusively in Sydney and targets consumers in this location. Henley Constructions submits that Henley Constructions uses its name as a brand in relation to apartments and multi-dwelling residential developments, whereas Henley Arch constructs detached or semi-detached single dwelling houses. Henley Constructions submits that it is an apartment builder and, unlike Henley Arch, not a builder of detached houses. 534 Henley Constructions submits that its use of the "1300HENLEY" phone word cannot amount to any of the alleged representations. Henley Constructions submits that it is not used in a "standalone" sense but rather in proximity to Henley Constructions' name, as a mere contact detail of Henley Constructions. Henley Constructions submits that consumers are well-familiar with traders' use of phone words as a means of facilitating a consumer's recollection of contact details. As a consequence, consumers are likely to see it as no more than Henley Constructions' phone number. 535 Henley Constructions submits that the references to "Henley" solus in the "About Henley Constructions" text section of the Henley Constructions website are clearly no more than abbreviated references to its name "Henley Constructions" and would be understood by consumers to function in that way. 536 Henley Constructions submits that Henley Arch has no reputation in relation to the building of multi-dwelling apartment complexes. The evidence, it submits, establishes that it has used the brand outside New South Wales in relation to the construction of lower budget and single dwelling homes. 537 Henley Constructions submits that Henley Arch has provided no evidence of consumers or potential consumers outside New South Wales viewing Henley Constructions' use of "HENLEY CONSTRUCTIONS" online or otherwise. This, it submits, is consistent with the construction markets being overwhelmingly localised on a State-by-State basis. Henley Constructions submits that consumers engage builders to provide services in their locality and unsurprisingly search engines appear to have catered for this in their results. 538 Henley Constructions submits that the Google Analytics data for Henley Arch's website fails to show evidence of a single consumer or potential consumer accessing Henley Arch's site. 539 Henley Constructions submits that, even if one or more of the Representations is found to be made out, there is, in any event, no real likelihood that a consumer will be misled or deceived by the Representations, given that consumers in this industry are acquiring expensive real property. 540 Henley Constructions submits that it is telling that for over eight years Henley Constructions provided its services under the "HENLEY CONSTRUCTIONS" brand in largely the same manner without complaint or instances of confusion. 541 Henley Constructions submits that Henley Arch has not proven a likelihood of misleading or deceiving the relevant consumers and has not established a contravention of ss 18, 29(g) and 29(h) of the ACL or ss 52, 53(c) and 53(d) of the TPA.

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Consideration - principles 542 The general principles in relation to the application of s 18 are well established and were not in dispute between the parties. Those principles were conveniently summarised in Henley Arch's submissions as follows. 543 Conduct is, or is likely to be, misleading or deceptive if it has a tendency to lead into error, notwithstanding that there was no intention to mislead or deceive: Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2013] HCA 54; 250 CLR 640 at [39]. In Vendor Advocacy Australia Pty Ltd v Seitanidis [2013] FCA 971; 103 IPR 1, Middleton J stated at [258]: It is important to recall that conduct causing confusion is not necessarily co-extensive with misleading and deceptive conduct: see Google Inc v Australian Competition and Consumer Commission (2013) 294 ALR 404; [2013] HCA 1 at 407 [8] per French CJ, Crennan and Kiefel JJ; Campomar (2000) 202 CLR 45 at 85 [102], and REA Group at [79] per Bromberg J. 544 Whether conduct is, or is likely to be, misleading or deceptive, is objectively determined by reference to the class of the public likely to be affected by the conduct: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; 149 CLR 191; Campomar Sociedad Limited v Nike International Limited [2000] HCA 12; 202 CLR 45 at [103]-[105]. 545 It is not necessary to demonstrate that there has been actual deception or confusion caused by the conduct: Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634; 317 ALR 73 at [45]. 546 Where the alleged misleading conduct involves confusion between the trading names of the applicant and respondent, the applicant will need to establish a reputation in its name among the relevant public. The relevant date for assessment of the reputation of the applicant is the date the alleged misleading conduct commenced: Nature's Blend Pty Ltd v Nestle Australia Ltd [2010] FCA 198; 86 IPR 1 at [12]-[13] and [46], adopting the approach used in the context of passing off as set out by the Privy Council in Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at [861]; 32 ALR 387 at [397]. 547 Misleading and deceptive conduct may occur, not only when a contract has been concluded under the influence of misleading advertising, but also at the point where members of the target audience have been enticed into "the marketing web" by an erroneous belief engendered by an advertiser, even if the consumer may come to appreciate the true position before a transaction is concluded: Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2013] HCA 54; 250 CLR 640 at [50] per French CJ. 548 In Pham Global, the Full Court stated at [80]-[81]: In [Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302] at 342 Lockhart J explained why issues of reputation could not be divorced from the reality of everyday life, noting that: Modern mass advertising through television (which reaches by satellite every corner of the globe instantaneously), radio, newspapers and magazines, reaches people in many countries of the world. The international mobility of the world population increasingly brings human beings, and therefore potential consumers of goods and services, closer together and engenders an increasing and more instantaneous awareness of international commodities. This is an age of enormous commercial enterprises, some with budgets larger than sovereign states, who advertise their products by sophisticated means involving huge financial outlay. Goods and services are often preceded by their reputation abroad. They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study. Conagra was decided 25 years ago. In 1992 the World Wide Web was in its infancy. There were no publicly available internet browsers. There was no Google, no Seek, no web browsing or the like. With the internet and travel both overseas and within Australia now ubiquitous in the lives of Australian people, the essential conceptual underpinning of IR's case is unsound. IR accepted that, before IR conceived of the IR composite mark, ICI had acquired a substantial reputation in its marks in Western Australia. IR's case depended on the proposition that ICI's reputation in its marks did not extend outside Western Australia and IR would accept any condition or limitation not to use its marks in Western Australia. We accept that the Act permits a condition or limitation to this effect to be imposed (discussed below). But the reality of modern life, with widespread use of the internet for advertising, job seeking, news gathering, entertainment, and social discourse and free and frequent movement of people across Australia for work, leisure, family and other purposes, necessarily impacts on both the acquisition of a reputation in a mark and the likelihood of the use of another mark being likely to deceive or confuse because of that reputation. Given current modes of communication and discourse and free and unfettered rights of travel within Australia, a substantial reputation in Western Australia in this national industry constituted a sufficient reputation in and across Australia for s 60(b) to be engaged. IR's attempts to subdivide the nation into its component States and Territories, in the present context at least, could not succeed. Its approach resonates with sentimental notions of pre or early Federation train track gauge differences. (Emphasis added.) 549 The question has often been framed as whether a "not insignificant number" of "reasonable" or "ordinary" members of that class of the public would, or are likely to, be misled or deceived. However, the Full Court in Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130; 278 FCR 450 at [23] and [24], recently explained how the test of "not insignificant number of reasonable persons within the relevant class" may be superfluous, specifically, their Honours observed at [23(f)] and [24], that: … Whether or not speaking of a reasonable member of a class implies as a matter of strict logical necessity that one is speaking of a significant proportion of that class …, nothing in the language of the statute requires the court to determine the size of any such proportion … [T]he test of reasonableness involves the recognition of the boundaries within which reasonable responses will fall. In our view it does not require any attempt to quantify, even approximately, the hypothetical reasonable individuals who have a particular response. The idea that such quantification is possible will almost always be an illusion, and illustrates how the test of "a not insignificant number" distracts from the terms of the statutory prohibition and the guidelines to its application laid down in Campomar. … … the "significant number" test is at best superfluous and at worst an erroneous and distracting gloss...(Citations omitted.) 550 Subsequently, Beach J in State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137 at [720] observed that the Full Court, in Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130; 278 FCR 450 at [23], had also noted that no substantive argument was directed to the correctness of the "significant number" test and their decision in the appeal did not turn on it. Beach J stated at [721]: How should I proceed in circumstances where I consider there to be at least three binding Full Court authorities prior to [Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130; 278 FCR 450], and importantly after [Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12; 202 CLR 45 (Campomar)], that justify me in applying such a test? … 551 Beach J reviewed a number of authorities and then stated at [745]: In all the circumstances, I will treat [Trivago N.V. v Australian Competition and Consumer Commission [2020] FCAFC 185; 384 ALR 496] as binding and superseding earlier Full Court authority. So, I will apply Campomar without any "not insignificant number" test.

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Consideration - application to facts 552 Having considered the evidence tendered in this proceeding, I am satisfied that Henley Constructions commenced using its name in February 2007 in line with the use of its invoices to GSW Pty Ltd. I am satisfied that there is no earlier use by Henley Constructions of the mark "HENLEY CONSTRUCTIONS" as a trade mark in respect of building and construction services. 553 I am also satisfied that, after Henley Constructions was put on notice of Henley Arch's claims of trade mark infringement and misleading and deceptive conduct in April 2017, Henley Constructions "ramped up" its marketing and promotion by reference to the mark "HENLEY CONSTRUCTIONS" and changed the mark such that the dominant word "Henley" was enlarged and the descriptive word "Constructions" was reduced in size such that the most distinctive characteristic of the mark was the word "Henley". I have previously made this finding in the section above titled "Findings on Henley Constructions' conduct after receipt of letter of demand". 554 I accept that the date for assessing Henley Arch's reputation for the purposes of the ACL claim is at the date the alleged misleading conduct commenced, which as identified above, occurred from February 2007. In finding that the alleged contravention occurred from this date, I rely on the evidence of the invoices, which in my view is the point at which Henley Constructions reinforced its reputation. This is consistent with the principles outlined by Edmonds J in The Change Group International PLC v City Exchange Mart Pty Ltd [2013] FCA 1048, where his Honour stated at [172]: In Optical 88 Limited v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526 at [329]-[334], Yates J considered a proposition, said to be based on what Gummow J said in Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) IPR 289 at 302 and 303, that if a complainant "reinforces" its reputation, such that, between the date of commencement of the impugned conduct and the commencement of proceedings, its reputation is "stronger", it is entitled to rely on that "stronger" reputation in the proceeding for the purpose of establishing that a contravention has occurred. I agree with what Yates J said in Optical 88 at [333] in rejecting the proposition: In my view the … proposition cannot be derived (or even discerned) from the proposition discussed by Gummow J in Thai World. If, in the present case, the applicant can establish that, as at the date of commencement of the impugned conduct (August 1993), it had a sufficient reputation to sustain its claim that the first respondent has contravened s 52 of the Trade Practices Act, it does not need to rely on any intervening strengthening of that reputation in the period before the commencement of proceedings, although any strengthening of its reputation may be a matter that is relevant to the question of relief: Nature's Blend [Pty Ltd v Nestle Australia Ltd (2010) 86 IPR 1] at [13]. If, on the other hand, the applicant cannot establish that, as at the date of commencement of the impugned conduct, it had a sufficient reputation to sustain its claim, I cannot see how any after-acquired reputation can assist it in the face of what would otherwise have been the legitimate commencement and continued conduct of the first respondent's business. (Emphasis added.) 555 In Flexopack, Beach J stated at [275] that "[t]he relevant date for assessing whether a respondent's conduct amounts to misleading or deceptive conduct is the date the conduct commenced". 556 It was not in dispute that at all relevant times, Henley Arch has had a significant reputation in its name "Henley", at least in Victoria in respect of the building and construction of semi-detached houses and townhouses. 557 Henley Constructions submits that Henley Arch's reputation is limited in that it does not extend to building homes in New South Wales, and nor does it extend to the construction of multi-dwelling residential apartment buildings. I reject this submission. For the reasons that follow, I find that Henley Arch had a significant reputation throughout Victoria, Queensland and South Australia which extended into New South Wales. I also find, for the reasons given below, that Henley Arch's reputation was not limited to single dwelling detached homes but extended to multi-dwelling residential townhouses or, more generally, as a builder of homes. 558 I find that, since about 2003, Henley Arch has marketed the "Henley" brand and its building and construction services via its website at www.henley.com.au to consumers throughout Australia and, indeed, internationally. Mr Harvey gave evidence, which I accept, that Henley Arch's customers include persons living outside Victoria who seek to build a home in Victoria to reside in as well as customers who reside outside Victoria who seek to build a home as an investment in Victoria. Mr Harvey also gave evidence that Henley Arch builds homes in Victoria and other States for overseas investors. 559 I am satisfied that Henley Arch has, since about 2003, promoted the website "www.henley.com.au" in its marketing and promotional materials including brochures. The following are examples (which were part of confidential annexure "LNS-26" to the affidavit of Lance Newman Scott affirmed on 9 May 2019 and attached to a statutory declaration dated 5 December 2008):

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560 While it may be difficult to observe in the above extracts, the website "www.henley.com.au" appears in each of the brochures extracted above. 561 I accept Mr Harvey's evidence that Henley Arch builds homes located in Victoria under the names "Henley" and "Henley Properties" for customers located in New South Wales. In this respect, and as I have stated above, Exhibit A23 provided the following relevant data: 562 This data shows, and I find, that Henley Arch built at least 54 homes in Victoria for customers located in New South Wales prior to 2007. If the homes recorded in the "Null" and "1900" columns are included, Henley Arch built 182 homes in Victoria for New South Wales customers before 2007. There were issues arising in relation to these "Null" and "1900" entries. I have referred to these issues above. While I acknowledge those issues, having heard the evidence of Mr Harvey, I accept that Mr Harvey provided an honest and adequate explanation in relation to them. I do not accept that those issues meant these houses with a corresponding "Null" or "1900" entry were not built by Henley Arch. In my view, the better inference is that there was an issue with the data entered into Henley Arch's systems in respect of these "Null" and "1900" entries, but those data entry issues did not mean that the relevant houses were not in fact built by Henley Arch. 563 Mr Harvey gave evidence, which I accept, that Henley Arch has built homes in New South Wales under the names "Henley" and "Henley Properties" from 1995 to 2000. After 2000, due to adverse publicity concerning defects in houses constructed by Henley Arch in New South Wales, Henley Arch wound down its operations in New South Wales but still 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. In this respect, Mr Harvey's evidence demonstrated that: (1) Henley Arch had 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. 564 These documents were not exhaustive of Henley Arch's commercial activity in New South Wales. They merely showed examples of that commercial activity. However, given the number of homes constructed in New South Wales before 2007, it can be inferred that further documentation was created in relation to those homes before 2007. 565 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

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566 I accept Mr Harvey's concession that Henley Arch's sales in New South Wales between 2002 and 2012 were "very small". Notwithstanding, confidential annexure "JH-51" to the First Harvey Affidavit provides Henley Properties Group's trading results for its operations in New South Wales from 2000 to 2017 and show a marked increase in sales for the years 2013 to 2017 (which have not been included in the table below due to their confidential nature): 567 In my view, this data evidences a substantial business activity from 2000 to 2003, and not insubstantial business activity in 2003 to 2005. There was admittedly a reduction in activity in 2005/2006. However, in my view, a fair assessment of this data is that the business then gradually recovered through 2006 and 2007 and, by 2008, was again not insubstantial. 568 This data, together with the data of persons in New South Wales purchasing homes located in Victoria, in my view, ensures Henley Arch had a genuine reputation in New South Wales for home building. 569 Henley Constructions contends that Henley Arch's websites as at 28 March 2005 (www.henley.com.au) only referred to business operations in Victoria, South Australia and Queensland. An extract of Henley Arch's website at that time is as follows: 570 However, these references to Victoria, South Australia and Queensland do not diminish the evidence that, at and prior to that time, Henley Arch was building homes in Victoria for persons located in New South Wales. They also do not diminish the evidence that, in New South Wales, Henley Arch's business prior to 2005 was reasonably substantial. In my view, data concerning the number of homes built and the value of sales generated is a better proxy for reputation when compared to representations made on past websites of Henley Arch. 571 In addition, and importantly, Mr Harvey tendered in evidence Google Analytics records which showed traffic or visits to Henley Arch's 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

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572 Now, this data concerns a period post-2013. However, it represents a reasonably large number of people each year visiting Henley Arch's website from New South Wales. Those numbers have been fairly consistent since 2014. It can be inferred that the number of website visitors would have been less than these figures in the period between 2001 and 2007. However, on the basis of this data, I believe it can also be safely inferred, and I find, that there would have been many persons in New South Wales visiting Henley Arch's website in the period 2001 to 2007. That further supports Henley Arch having a reputation in New South Wales in or around late 2006 and early 2007. 573 Henley Constructions also made much of the fact that Henley Arch has used, and uses, the name "Edgewater" to promote its activities in New South Wales. However, Edgewater was only registered as a company on 12 January 2010. It is not relevant to Henley Arch's reputation in 2007. Indeed, Mr Harvey's evidence was that, 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 around 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). 574 Henley Constructions contends that the Australian building industry is State and Territory based and not national. I reject this submission for the reasons that follow. Building and construction markets - nationally based 575 Before turning to consider the effect of this evidence, it is convenient to set out a brief history of the regulatory framework that governs the building and construction industry in Australia and how this supports the view that the market is a national market, rather than State-based. 576 The BCA was first introduced in 1990 by the Australian Uniform Building Regulations Co-ordinating Council to provide a nationally consistent set of technical requirements and standards for the design and construction of new buildings and other structures throughout Australia. States and Territories progressively adopted the BCA during the early 1990s, and in 1992 a nationally consistent BCA was formed. 577 Following this, the Australian Building Codes Board (ABCB) was established, and one of the first tasks of the ABCB was to transform the BCA into a performance based document. This new "performance based" iteration of the BCA was adopted by the Commonwealth and all of the States and Territories by early 1998. 578 The BCA was updated and adopted annually by each of the States and Territories on 1 May of each year until 2011, when the NCC was introduced. 579 The NCC was an initiative by the Council of Australian Governments (COAG) to develop and incorporate all on-site construction requirements into a single code. The NCC is a consolidation of building and plumbing regulations. The NCC is made up of three volumes. The BCA is set out in the first two volumes of the NCC and the final volume sets out the Plumbing Code. 580 NCC Volume One relates to apartment buildings over three storeys, public buildings and structures as well as commercial and industrial buildings. NCC Volume Two relates to free-standing residential houses, townhouses, duplexes and non-habitable buildings and structures. 581 The date for assessing Henley Arch's reputation for the purposes of the ACL claim is at the date the alleged misleading conduct commenced, in February 2007, as outlined above. While this date predates the NCC, it is clear that the BCA, being a code that was (and still is as part of the NCC Volume One and Two) nationally adopted, and is, to a large degree uniform across the different State and Territory jurisdictions. This, in my view, supports the position that the building and construction market is a national market. 582 Turning to the evidence of Mr Tatian, as has been outlined above, Mr Tatian noted that the BCA is contained in the NCC. Mr Tatian described the NCC as "a nationally consistent framework of regulation to the construction of new buildings". Moreover, Mr Tatian by his own admission, identified that there is "much similarity" in these laws and regulations between the States and Territories. 583 Mr Harvey gave evidence, which I accept, that Henley Arch and its subsidiaries are licensed to build in a number of States across Australia. Henley Arch held building licences through its director Robert Bowen in Victoria, South Australia and in New South Wales. Henley Properties (Qld) Pty Ltd had licences in Queensland. In New South Wales, Edgewater Homes Pty Ltd had a licence in New South Wales. 584 It is also relevant that the Mutual Recognition Act 1992, as implemented in States and Territories, allows persons who are registered builders in one jurisdiction to rely upon that registration to seek registration in other States or Territories. Mr Tatian gave evidence, which I accept, that he is registered as a building certifier in each of New South Wales, Victoria, Tasmania and Western Australia. 585 The Housing Industry Association, of which both Henley Arch and Henley Constructions are members, is also a national organisation. 586 Suppliers to the building and construction industry are not only local or State-based but supply materials and products to different States of Australia. 587 In addition, I have already referred to evidence above which shows a number of consumers in New South Wales purchased Henley Arch homes in Victoria. I have also referred to evidence of a significant number of persons located in New South Wales accessing Henley Arch's website. That evidence diminishes the force of any submission that the construction industry is highly localised or State-based. 588 Moreover, a finding that the construction industry is a State-based market would fail to have proper regard to "the reality of modern life, with widespread use of the internet for advertising, job seeking, news gathering, entertainment, and social discourse and free and frequent movement of people across Australia for work, leisure, family and other purposes": Pham Global, [81]. 589 Finally, the economic forces of supply and demand should be considered. As Henley Arch submits, a market is typically defined by reference to the forces of supply and demand. I consider it plain that, if there was a sufficient increase in the price of home construction in New South Wales, investors and owner-occupiers may switch to purchasing homes (whether single dwelling or multi-dwelling apartments) in another Australian State. Alternatively, suppliers of home construction (ie builders) may move their operations or expand their operations to another Australian State. In other words, when assessing who the relevant building services are directed to, an answer to that question is not limited by geography. Equally, when considering which builders might be in a position to supply the relevant services, there was no good reason advanced as to why an answer to that enquiry is limited by geography. By way of example, there was no submission that showed sufficiently high barriers to entry and which meant builders cannot operate across State boundaries. 590 That position is supported by Mr Harvey's evidence in that Mr Harvey said that consumers of Henley Arch's services can be located anywhere, and not merely in the location where the relevant home is being constructed. In particular, investors (as opposed to owner-occupiers) are not limited at all as to where they might be located. The evidence referred to above also plainly shows that an investor in New South Wales may wish to invest, and it appears has used Henley Arch's services to invest, in the Victorian property market. 591 Contrary to Henley Constructions' submissions, I do not accept that Henley Arch's reputation is limited so as to exclude any confusion arising from the use of the mark "HENLEY CONSTRUCTIONS" in relation to the construction of multi-dwelling residential apartment buildings. 592 Henley Constructions submits that there is a distinction to be made between the construction of "multi-dwelling residential apartment buildings" and the building and construction services provided by Henley Arch. I am not persuaded on the evidence that the relevant class of the public would understand and appreciate the differences in construction between detached single dwelling homes, townhouses and multi-dwelling residential apartment buildings. There is no evidence that the relevant class of the public would understand or appreciate the differences in constructions. Indeed, the evidence of Mr Beccera and Mr Tatian was that there can be a lot of overlap between the steps involved and complexity of designing and constructing a detached house compared with the design and construction of apartments. 593 I find that between February 2007 and February 2017, Henley Constructions used the marks "HENLEY CONSTRUCTIONS" and "Henley" including as part of signs and incorporated one or both of those names in a sporadic and limited fashion in the following way: (1) At the earliest, Henley Constructions commenced using the "HENLEY CONSTRUCTIONS" trade mark in respect of building and construction services in February 2007, which is shown on the invoices that Henley Constructions provided to GSW Pty Ltd, which have been discussed above; (2) From November 2009 to around February 2015, Henley Constructions used the first Henley Constructions logo at reference A in the Particulars Table on its website at www.henleyconstructions.com.au. (3) From early 2009 to February 2016, Henley Constructions used the first Henley Constructions logo at reference A in the Particulars Table on signage at least at the following locations and times (Relevant Sites): (a) in early 2009, at 4-6 Marlborough Road, Homebush West, New South Wales; (b) in early to mid-2012, at 15-17 Larkin Street, Camperdown, New South Wales; (c) around March 2015, at 456-458 Gardeners Road, Alexandria, New South Wales; and (d) in or around February 2016, at 59-65 Chester Avenue, Maroubra, New South Wales. (4) Henley Constructions used the domain name "henleyconstructions.com.au" at reference B in the Particulars Table, from: (a) November 2009 to about February 2015, on Henley Constructions' website; and (b) early 2009 to February 2016, on signage at the Relevant Sites. 594 I find, on the evidence, that from around February 2017, Henley Constructions used the marks "HENLEY CONSTRUCTIONS" and "Henley" solus as part of signs and incorporated one or both of those names in an increasing manner as follows: (1) Henley Constructions used the second Henley Constructions logo at reference C in the Particulars Table: (a) from February 2017 to August 2018, on Henley Constructions' website; (b) since at least August 2017, on a brochure provided to the public in respect of the "Aperture Apartments", in Marrickville, New South Wales; (c) from October 2018, on the website at www.aperturemarrickville.com.au. (2) Henley Constructions used the name "HENLEY CONSTRUCTIONS" at reference D in the Particulars Table: (a) in or around 28 March 2017, in an advertisement in the Inner West Courier newspaper; (b) since at least 15 February 2018, on Facebook; (c) from October 2018, on the following websites: (i) www.aperturemarrickville.com.au; (ii) www.thebirdwood.com.au; (iii) www.libertysutherland.com.au; (d) from July 2019, on the website www.quartierdrummoyne.com.au; (e) from at least February 2019 (but no earlier than 2 May 2018), on the website www.henleygallery.com.au. (3) Henley Constructions used the sign "HENLEY" at reference E in the Particulars Table: (a) from February 2017 to August 2018, on Henley Constructions' website; (b) on or around 28 March 2017, in an advertisement in the Inner West Courier newspaper; (c) from October 2018, on the websites www.aperturemarrickville.com.au and www.thebirdwood.com.au; (4) Henley Constructions used the third Henley Constructions logo at reference G in the Particulars Table: (a) after 10 May 2017, on hoarding at construction sites, in email signatures, and on business cards; (b) since in or around mid-2017, on signage at the following sites: (i) at least in or around June 2017, at the "Aleya" site, at 1 Sparkes Lane, Camperdown, New South Wales; (ii) in or around August 2017, at a construction site at 507-509 President Ave, Sutherland, New South Wales; (iii) in or around September 2017, at the "Birdwood" construction site at 203 Birdwood Road, Georges Hall, New South Wales; (iv) in or around October 2017, at a construction site at 1356-1362 Botany Road, Botany; (v) at least in or around February 2018, at 233-235 Botany Road, Waterloo, New South Wales; (vi) at least from September 2018 to April 2019, at 81-83 Waterloo Road, Punchbowl, New South Wales; (vii) at least in or around September 2020, at the "Chanel" building at 27 Church Street, Camperdown, New South Wales; (viii) from at least March 2021, at the "Botany Living" site at 1445-1447 Botany Road, Botany, New South Wales; (ix) between at least in or around May 2019 and in or around February 2020, at a construction site at 9 Wrights Road, Drummoyne, New South Wales (for the "Quartier" project); (c) since at least 15 February 2018, on Facebook; (d) from in or around July 2018, on Instagram; (e) from in or around July 2019, on the website www.quartierdrummoyne.com.au; (f) from in or around September 2017, on completed low to medium-rise multi-dwelling apartment blocks, including at least: (i) from September 2017, at the "Birdwood" building, at 203 Birdwood Road, Georges Hall, New South Wales; (ii) from August 2018, at the "Aleya" building, at 1 Sparkes Lane, Camperdown, New South Wales; (iii) from December 2018, at 59-65 Chester Avenue, Maroubra, New South Wales; (iv) from August 2019, at the Camperdown "HQ" building, at 128 Parramatta Road, Camperdown, New South Wales; (v) from March 2020, at the "Quartier" building, at 9 Wrights Road, Drummoyne, New South Wales; (vi) from July 2020, at the "Noah" building, at Gladesville, New South Wales; (vii) from October 2020, at the "Chanel" building, at 27 Church Street, Camperdown, New South Wales; (g) since at least November 2019, on safety hats and "hi-vis" safety clothing. (5) Henley Constructions used "The Henley Display Gallery" at reference H in the Particulars Table: (a) 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; (b) from October 2018, on the website www.aperturemarrickville.com.au; (c) from at least February 2019 (but no earlier than 2 May 2018), on the website www.henleygallery.com.au. (6) Henley Constructions used "Henley" signage on cranes, or photographs of "Henley" signage on cranes at reference I in the Particulars Table: (a) from in or around February 2018, on Facebook and Instagram; (b) from at least 2018, on a crane located around 30m in the air including when lit up at night, including: (i) between at least in or around September 2018 to November 2019, at St Charbel's Care Centre, 81-83 Waterloo Road, Punchbowl, New South Wales; (ii) from at least March 2021 at the "Botany Living" site at 1445-1447 Botany Road, Botany, New South Wales. (7) Henley Constructions used various "hashtags", namely "#henleyconstructions", "#henleygallery", "#henley", and images of the third Henley Constructions logo (in reference G) at reference J in the Particulars Table: (a) since at least February 2018, on Facebook; (b) from in or around July 2018, on Instagram. (8) From at least February 2019 (but no earlier than 2 May 2018), Henley Constructions used "henleygallery.com.au" or "Henley Built" at reference L in the Particulars Table on the website www.henleygallery.com.au. 595 In light of these uses and representations by Henley Constructions, and having regard to the evidence which underpins them, I accept that, from February 2017, Henley Constructions sought to promote itself to a broader section of the public by escalating its marketing activity and expanding the channels through which it advertises, including by way of social media platforms. This is borne out by the increase in advertising spend between 2016 and 2017. By way of example, the evidence discloses that: (1) In 2014, Henley Constructions' total advertising spend was $10,000, attributable to "Marketing, Donations". (2) In 2015, Henley Constructions' total advertising spend was $10,000, attributable to "Marketing, sponsorship". (3) In 2016, Henley Constructions' total advertising spend was $10,000, attributable to "Website, marketing, sponsorship". (4) In 2017, Henley Constructions' total advertising spend was $124,978 comprising $86,500 attributable to "marketing and website design, uniform attire", $33,000 attributable to "crane signage", $5,280 attributable to "site safety mesh with the Henley Constructions logo" and $198 attributable to leasing of the 1300 HENLEY phone number. This is more than a ten-fold increase in advertising expenditure. (5) In 2018, Henley Constructions' total advertising spend was $50,376, comprising $48,000 attributable to "marketing, website design and uniforms, sponsorship", and $2,376 attributable to leasing the 1300 HENLEY phone number. 596 I find that the "ramping up" of Henley Constructions' marketing and promotional activity from February 2017 included: (1) launching a completely re-designed version of Henley Constructions' website with a significantly greater amount of content than appeared previously; (2) re-designing its logo twice, with the last re-design occurring after the letter of demand to Henley Constructions from Henley Arch dated 13 April 2017; (3) commencing using its branding on cranes at its construction sites; (4) commencing promoting itself on Facebook; (5) commencing promoting itself on Instagram; (6) commencing using its branding in the brochures and websites of the developers of Henley Constructions' construction projects; (7) commencing using its branding on vehicles; (8) commencing using its branding on "hi-vis" vests; (9) commencing permanently fixing its branding to the face of buildings it constructs as "By Henley Constructions" (using the third Henley Constructions logo to the right of the word "By"); (10) commencing the promotion of its construction projects at a display gallery named "The Henley Display Gallery", both physically and at www.henleygallery.com.au; and (11) commencing sponsorship of sporting clubs and community organisations. 597 I am satisfied that, by engaging in this conduct, Henley Constructions has made the representations alleged in [18] of Henley Arch's Statement of Claim, namely that: (1) Henley Constructions is Henley Arch; (2) Henley Constructions is affiliated with Henley Arch; (3) Henley Constructions is sponsored or approved by Henley Arch; (4) Henley Constructions' services are provided by, or with the licence or authority of, Henley Arch; (5) Henley Constructions' services are affiliated with Henley Arch; and/or (6) Henley Constructions' services are sponsored or approved by Henley Arch. 598 At least as I understood it, it was not in dispute that if, as I have found, these representations were made, then they were false. In any event, it is obvious that those representations are in fact false. 599 The addition of the word "Constructions" does not serve to distinguish Henley Constructions building and construction services from those services provided by Henley Arch. I find that the use of the marks "HENLEY CONSTRUCTIONS" and "Henley" in the various styles does not serve to distinguish the building and construction services provided by Henley Constructions from those of Henley Arch. Indeed, Mr Damian Boyer, a former sales representative of James Hardie, a supplier to Henley Arch, gave evidence that, when he saw the name "Henley Constructions", this caused him to email Henley Arch to enquire as to whether there was an association. In my view, that provides actual evidence of a well-informed consumer being led into error, or having a tendency to be led into error, by reason of merely reading the name "Henley Constructions". The error, or tendency to be led into error, was that Mr Boyer entertained the possibility that Henley Constructions was associated with Henley Arch (the subject line of Mr Boyer's relevant email was: "Guys, does the below business based in Sydney [namely, Henley Constructions,] have anything at all to do with [Henley Arch]?"). Of course, there is no such association. 600 As a consequence, I find that a consumer of building and construction services is likely to be led into error, and be misled into the belief that Henley Constructions is affiliated, sponsored, approved or licensed by Henley Arch such that its conduct contravenes ss 18, 29(g) and 29(h) of the ACL and, at relevant times before the introduction of the ACL, ss 52, 53(c) and 53(d) of the TPA.

[100]

Henley Arch's submissions 603 Henley Arch submits that it has four bases upon which to resist the right to register a defence under s 122(1)(fa), of the TMA and upon which Henley Constructions' putative trade mark application would be refused. Those bases are as follows: (1) first, that under s 58 of the TMA, the registration of these marks may be opposed by Henley Arch on the basis that Henley Constructions is not the owner of the registered trade marks, and that Henley Arch is able to prove that it first used these marks, and therefore obtained prior ownership of the marks; (2) second, under s 44(2) of the TMA, an application for a registration of a trade mark must be rejected where that trade mark is substantially identical, or deceptively similar to a trade mark which is already registered by a person that offers the same, or similar services to the applicant's services. As such, Henley Arch submits that its prior registration of its trade marks blocks Henley Constructions' putative mark; (3) third, under s 42(b) of the TMA, the prospective application of Henley Constructions' marks, if they were to occur, would be contrary to law. This, Henley Arch submits, is based on the putative use of Henley Constructions' mark which Henley Arch submits is in contravention of s 52 and ss 53(c) and 53(d) of the TPA, as it then was, assuming the relevant date, being the date Henley Constructions first used "HENLEY CONSTRUCTIONS" in respect of those services, is prior to the introduction of the ACL; otherwise, ss 18 and 29 of the ACL; and (4) fourth, under s 60 of the TMA, the prospective application of Henley Constructions' marks, if they were to occur, would be rejected because Henley Arch had acquired a reputation in Australia in building and construction services, and any registration of Henley Constructions' prospective trade marks would cause confusion between with Henley Arch's well-known marks. 604 Henley Arch submits that each of the above four bases would be a barrier to registration of the mark "HENLEY CONSTRUCTIONS". 605 Henley Arch submits that the date at which the hypothetical application for the "HENLEY CONSTRUCTIONS" mark would be assessed, for the purposes of s 122(1)(fa), at the date of the alleged infringing use, which is when the mark for the relevant services was first used in respect of those services: Sensis Pty Ltd v Senses Direct Mail and Fulfilment Pty Ltd [2019] FCA 719; 141 IPR 463 (Sensis) per Davies J at [62]. There, Davies J stated that "[c]ontextual considerations make it clear in my view that the relevant date at which the defence is to be assessed is as at the date of the alleged infringing use". 606 Henley Arch submits that the Court needs to assess whether Henley Constructions would be entitled to register "HENLEY CONSTRUCTIONS" as a trade mark for the relevant services at the date it first used the mark in respect of those services. 607 Henley Arch submits that, on the evidence, the earliest date in which the name "HENLEY CONSTRUCTIONS" was used was 10 February 2007 when Henley Constructions rendered its first invoice to, GSW Pty Ltd.

[101]

First ground of objection - Section 58 TMA 608 The first ground of objection that Henley Arch relies upon is s 58 of the TMA which provides that "[t]he registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark". 609 Henley Arch raises this ground of objection in two contexts. The first is in response to Henley Constructions' asserted "right to register" defence pursuant to s 122(1)(fa) of the TMA. The second is in response to Henley Constructions' claim that the "HENLEY" mark and "HENLEY PROPERTIES" Device Mark should be geographically limited to exclude New South Wales under s 102(1)(b) of the TMA. It is submitted by Henley Arch that Henley Constructions can only make that claim if it would be entitled to register "HENLEY CONSTRUCTIONS" in respect to the relevant services in New South Wales. 610 Henley Arch submits that, on the facts of this case, Henley Constructions cannot obtain any registration for "HENLEY CONSTRUCTIONS" whether the putative application is assessed under s 122(1)(fa) or s 102(1)(b) of the TMA. This, it is submitted, is irrespective of whether Henley Constructions can establish an honest concurrent use of "HENLEY CONSTRUCTIONS" as at the date of assessment of each putative application, because a successful opposition under s 58 is independent of other grounds of opposition to registration of a mark, including s 44 of the TMA. 611 Henley Arch submits that it was the first to seek registration of the mark "HENLEY" and the "HENLEY PROPERTIES" Device Mark for building and construction services on 18 December 2006. 612 Henley Arch submits that the first question is whether the mark "HENLEY CONSTRUCTIONS", of which Henley Constructions contends it should obtain registration, is "substantially identical" to either the marks "HENLEY" or the "HENLEY PROPERTIES" Device Mark. Henley Arch submits that there is a substantial identity between the "HENLEY CONSTRUCTIONS" mark and the two above marks. This has also been found above. 613 The second question that arises under s 58 of the TMA relates to what use Henley Arch made of the "HENLEY CONSTRUCTIONS" mark prior to the relevant filing date, and what intentions did Henley Arch have at the time, to the extent that it had not made actual use of the mark for all the services in issue. Henley Arch relies upon its use of the "HENLEY" mark alone. Further, Henley Arch submits that its use of what it describes in its submission as the ""Henley Properties" and henley.com.au and the 2005 Henley Devices" are each being uses of the "HENLEY" mark with additions that do not substantially affect the identity of the "HENLEY" mark. 614 Henley Arch relied upon evidence that it had first used the "HENLEY" mark as a trade mark in relation to building and construction services (in particular building of detached houses, the building of townhouses/terraces and the building (or renovation) of a multi-dwelling apartment building) well prior to the 18 December 2006, the filing date of the "HENLEY" mark. Henley Arch submits that the evidence of use discloses that the henley.com.au website address was used prior to 2006 (wherein Henley Arch also used the "HENLEY" trade mark), and it promoted the building and construction of detached houses and the building of townhouses and terraces. 615 Henley Arch relied upon the evidence of Mr Harvey as to Henley Arch's intention to use the marks for the breadth of services specified including in relation to multi-dwelling housing developments. 616 In response to Henley Constructions' contention that there is a distinction to be drawn between "building and construction services in relation to multi-dwelling residential apartment buildings" and other kinds of building and construction services and "building and construction services at large", Henley Arch made the following submissions. 617 Henley Arch submits that, in the case of the s 58 ground, the purported distinction does not arise on the evidence given, Mr Harvey's evidence that there was an intention to use the "HENLEY" mark and the "HENLEY PROPERTIES" Device Mark in respect of the full breadth of the designated "building and construction services" including multi-dwelling housing developments (which included low and high rise residential apartment buildings). Additionally, Henley Arch submits that the distinction is not a real one in terms of presenting services to a consumer, or the segmentation of the trades that service the construction industry. Henley Arch submits that there is extensive and often complete overlap in the relevant services. Henley Arch further submits that the evidence of Mr Tatian was that licences of builders in Australia are not limited to particular classes of buildings and, in fact, the evidence of Mr Tatian is that in New South Wales builders are licensed to build all types of buildings. 618 Ultimately, Henley Arch submits that on the evidence, it can be concluded that the building and construction of multi-dwelling residential apartment buildings is the "same kind of thing" as building single dwellings whether detached or with shared roofs that are not apartments.

[102]

Second ground of objection - Section 44 TMA 619 The second ground of objection relied upon by Henley Arch in response to Henley Constructions' hypothetical application to register "HENLEY CONSTRUCTIONS" as a mark is under s 44(2) of the TMA. 620 Section 44(2) provides: (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if: (a) it is substantially identical with, or deceptively similar to: (i) a trade mark registered by another person in respect of similar services or closely related goods; or (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods. 621 Section 44(3) provides: If the Registrar in either case is satisfied: (a) that there has been honest concurrent use of the 2 trade marks; or (b) that, because of other circumstances, it is proper to do so; the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 622 Section 44(4) provides: If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period: (a) beginning before the priority date for the registration of the other trade mark in respect of: (i) the similar goods or closely related services; or (ii) the similar services or closely related goods; and (b) ending on the priority date for the registration of the applicant's trade mark; the Registrar may not reject the application because of the existence of the other trade mark. 623 Henley Arch submits that, given Henley Constructions does not dispute that "HENLEY CONSTRUCTIONS" is deceptively similar to the registered "HENLEY" mark, and does not dispute that each of the Broad Services and Narrow Services fall within the designated services for Henley Arch's registered marks, Henley Constructions could not obtain registration of its putative mark because the priority date for the "HENLEY" mark is 18 December 2006, which is earlier than Henley Constructions' first use of its mark in respect of the relevant services on 10 February 2007. On this basis, Henley Arch submits that Henley Constructions could not obtain registration for its putative mark unless it can establish honest concurrent use of "HENLEY CONSTRUCTIONS" pursuant to s 44(3)(a) of the TMA, or unless it can establish the existence of "other circumstances" making it proper to accept "HENLEY CONSTRUCTIONS" for registration, pursuant to s 44(3)(b) of the TMA. 624 Henley Arch submits that s 44(3)(a) of the TMA was not available to Henley Constructions as a defence to s 44(2), at least for the purposes of its s 122(1)(fa) defence to Henley Arch's claim because the putative application needs to be assessed at the date of Henley Constructions' first infringing use of "HENLEY CONSTRUCTIONS": Sensis at [62], [65] and [155(d)]. Henley Arch submits that, prior to the first infringing use, Henley Constructions has not used the mark and, therefore, there can be no concurrency of use which s 44(3)(a) of the TMA engages. 625 Henley Arch submits that, at all relevant times, Henley Arch had a significant reputation throughout Australia, through extensive promotion and use of the names "HENLEY" and "HENLEY PROPERTIES" in respect of building and construction services. Henley Arch submits that, in any event, it was not in dispute that Henley Arch had engaged in a longstanding use of these trade marks in Victoria in relation to single dwelling houses and townhouses. Henley Arch submits that such use extended into New South Wales where Henley Arch was still using the "HENLEY" mark to provide existing customers with building and construction services in respect of homes located in New South Wales up to at least 2010 and in relation to homes located in Victoria, throughout the relevant period. Henley Arch submits that, in contrast, there is no evidence of any use of "HENLEY CONSTRUCTIONS" as a trade mark by Henley Constructions prior to 10 February 2007. 626 Henley Arch submits that Henley Constructions' use of the sign "HENLEY CONSTRUCTIONS" between 10 February 2007 and February 2017 was sporadic and minimal. Henley Arch submits that, between early 2017 and November 2018, Henley Constructions escalated its marketing activity and expanded the channels through which it advertised, which is reflected in a sharp increase in its advertising spend in 2017. Henley Arch submits that the evidence discloses that this "ramping up" of activity occurred after Henley Arch had put Henley Constructions on notice of its concerns of alleged infringing conduct in April 2017. Henley Arch submits that Henley Constructions' conduct could not be seen as "honest". 627 Henley Arch submits that the potential for confusion is high given the close resemblance of these marks and also that they sell the same services (namely, building and construction services). Henley Arch submits that, given the minimal use of the "HENLEY" or "HENLEY CONSTRUCTIONS" signs by Henley Constructions prior to 2017, it is not surprising that there is no evidence of actual confusion during that period. Henley Arch relies upon the evidence of Mr Boyer that, in early 2017, he saw the name "Henley Constructions" and this caused him to email Henley Arch to enquire as to whether there was an association.

[104]

Fourth ground of objection - Section 60 TMA 631 The final ground of objection relied upon by Henley Arch is under s 60 of the TMA. Section 60 provides: The registration of a trade mark in respect of particular goods or services may be opposed on the ground that: (a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion. 632 Henley Arch submits that, at or before the priority date of the putative application, its relevant trade marks had acquired a reputation in Australia amongst a significant section of the public. Henley Arch submits that, given its trade marks had acquired this reputation, Henley Constructions' use of the "HENLEY CONSTRUCTIONS" sign would likely deceive or cause confusion to consumers in the market for building and construction services. 633 Henley Arch submits that the threshold for establishing a claim under s 60 is lower than that required in an action under ss 18 and 29(h) and (g) of the ACL. When considering a trade mark opposition under s 114 of the Trade Marks Act 1905-1948 (which was analogous to the current s 60), Kitto J in Southern Cross found at [595]: … It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring … - it is sufficient if 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 come from the same source. It is enough if the ordinary person entertains a reasonable doubt. 634 Henley Arch relied on the observations of Yates J in Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; 275 ALR 526 (Optical 88 (No 2)) at [189], where his Honour observed, in relation to s 60, that "… the tests for determining contravention of the Trade Practices Act and for determining passing-off are not the tests for determining the registrability of a trade mark under the provisions of the Trade Marks Act", and further at [190] his Honour observed: … s 60 does not operate only where an exclusive reputation is demonstrated. Section 60, arguably, will operate when there are conflicting reputations. It is sufficient for s 60 purposes that, before the priority date for the opposed application, another mark has a reputation and, because of that reputation, use of the opposed mark would be likely to deceive or cause confusion. It is beside the point that, at the time of making the opposed application, it can be shown that the opposed mark has its own reputation. 635 Henley Arch contends that the present case has similar features to Pham Global in which s 60 was found to be a bar to that registration such that the defence under s 122(1)(fa) would not apply. This was notwithstanding that the respondent there contended that it was entitled to registration of its mark "Insight Radiology" only in New South Wales, and notwithstanding that the applicant's reputation for "Insight Clinical Imaging" (ICI) was focused on Western Australia. 636 Henley Arch submits that, in Pham Global, the Full Court found that a reputation in a particular State (there, Western Australia) in respect of radiology services was found to amount to having a "reputation in Australia" for the purposes of s 60(a) of the TMA: Pham Global at [61]. Henley Arch also submits that, in Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406; 122 IPR 232 (Insight Radiology) at [77] and [87] -[88], Davies J found that ICI's reputation was established by certain marketing and promotion at interstate and international conferences and publication of academic articles and books, the use of its marks on its website including visitors from persons located interstate, online recruitment of staff nationally, and referrals of patients from interstate and interstate patients on its records. 637 Henley Arch submits that, in Pham Global, the respondent's (who was also the respondent in Insight Radiology, i.e. Insight Clinical Imaging) database showed 10 referrals from interstate doctors and 440 patients out of 131,680 on its records that had an interstate address at the relevant time: Pham Global at [68]. Notwithstanding the very small numbers in the context of the business as a whole, the Full Court in Pham Global stated at [68]: The primary judge did note that the evidence included the evidence of inter-State referrals to ICI and, as referred to in [77(e)] of her Honour's reasons, "use of an online recruitment function "Seek" to advertise for professional staff, many of whom were recruited from interstate". The absolute numbers of inter-State patients is not large compared to the number of referrals within Western Australia (around 440 people compared to 131,680 people of those whose address has been recorded), but this is also evidence which supported the inference of awareness of the ICI mark in relation to its services outside Western Australia. The same must be said of the national recruitment undertaken by ICI. 638 Henley Arch submits that, in Pham Global, an important part of the Full Court's reasoning, which accorded with that of Davies J below, was that the evidence showed that radiology providers "operate in a national industry so that there is potential for decisions for deception or confusion even if Insight Clinical Imaging's marks had not acquired a reputation beyond Western Australia": Pham Global at [65(1)]. The matters upon which the Full Court and Davies J relied in establishing the existence of a "national market" was the registration of a radiographer being national, the relevant industry association of radiographers being national, the relevant body regulating radiologists being national, and radiological services being provided interstate by way of teleradiology: Pham Global at [66] and [67]. 639 Henley Arch submits that the existence of a "national industry" in Pham Global was a sufficient but not necessary element of the finding that s 60 (and the ACL claim) was satisfied. That is because, the Full Court found, as noted above, that an inference could be drawn of an awareness of the ICI marks outside of Western Australia even with very low numbers of actual patients and referrals occurring. Henley Arch submits that the relevance of there being a "national industry" in Pham Global appears to have been that, although the reputation outside of Western Australia was not "substantial", upon seeing Insight Radiology and its marks, those persons from interstate would be misled or confused, and those persons would conclude that, given the "national industry", it was likely that ICI now operated as Insight Radiology in New South Wales. 640 Henley Arch submits that this Court does not need the existence of a "national industry" to make good the likelihood of deception or confusion in one State based on a substantial reputation in another State, if the material permits the inference of "spill over" reputation in the first State and consumers would not be aware of any particular impediment to the trader operating in both States if it wanted to, either directly or by way of affiliation, under the same or similar branding. 641 Henley Arch submits that, at all relevant times, Henley Arch's registered marks held a substantial reputation in the relevant marks in Victoria in respect of, at least, building and construction of single dwelling detached homes and townhouses. Henley Arch submits that such a reputation is a relevant reputation in "Australia" for the purposes of s 60 of the TMA in accordance with Pham Global. 642 Henley Arch submits that its reputation in the relevant marks extended beyond Victoria and into New South Wales and was proven and may be inferred from its interstate customers and its consistent and ongoing promotion through the Henley Arch website. In this regard, Henley Arch relies upon the observations in Pham Global at [81]: …. [T]he reality of modern life, with widespread use of the internet for advertising, job seeking, news gathering, entertainment, and social discourse and free and frequent movement of people across Australia for work, leisure, family and other purposes, necessarily impacts on both the acquisition of a reputation in a mark and the likelihood of the use of another mark being likely to deceive or confuse because of that reputation. Given current modes of communication and discourse and free and unfettered rights of travel within Australia, a substantial reputation in and across Australia in this national industry constituted a sufficient reputation in and across Australia for s 60(b) to be engaged …

[107]

Section 58 - ownership of substantially identical trade mark 647 As to s 58, Henley Constructions submits that there are two methods of establishing ownership. As to the first method, in short, if an application for the registration of a trade mark has not been filed first, then the first person to use a trade mark for a particular good or service (or good or service that is the "same kind of thing": Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; 164 FCR 506) in their own capacity is the owner. Thus the first method of ownership is by "first use". 648 As to the second method, if no person has used a particular mark in Australia but a person has filed an application to register the trade mark, then that person will be regarded as the owner of the trade mark for which registration is sought in relation to the specified goods and services (and goods and services that are the "same kind of thing": Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601 per Dixon J at p 413). That is ownership by "authorship and first filing". 649 Henley Constructions submits that Henley Arch's claim to ownership should (at least now, the evidence having been concluded) be confined to the services it actually offered before the hypothetical priority date of Henley Constructions' hypothetical application, being the filing date of Henley Constructions' original Notice of Cross-Claim and Defence. However, Henley Arch has asserted, in its opening address, an intention to use both the "HENLEY" mark and the "HENLEY PROPERTIES" Device Mark for more expansive services, such as high-rise apartment complexes. Henley Constructions submits that, in the course of cross-examination, Mr Harvey accepted that Henley Arch had no intention, as early as 2000, and again in 2006 (the year it applied for the trade marks), to build high-rise apartments, and further that it does not have an intention to do so in the future. 650 Henley Constructions also submits that Henley Arch cannot point to use of the "HENLEY" trade mark in relation to building and construction services in relation to multi-dwelling residential apartment buildings. Henley Constructions submits that, to try and overcome this problem, Henley Arch argues that the two types or classes of building are the "same kind of thing". 651 Henley Constructions submits that building and construction services in relation to houses (terraces or otherwise) are not the common sense true equivalent of building and construction services in relation to multi-dwelling residential apartment buildings. Henley Constructions submits that, on the evidence, the following differences between the services provided in relation to the two building forms are material: (1) regulatory requirements, such as fire safety requirements; (2) the design and planning stages, including design approval; (3) the typical scope of the relevant building project and the personnel and business structure required; (4) methods of construction and materials used; and (5) the degree of complexity in the building and construction process and the need for specialisation. 652 Henley Constructions submits that the witnesses called by Henley Arch to prove that apartments are the same as detached houses did not have any relevant qualifications or experience and instead each had experience in supplying Henley Arch with particular products. 653 Henley Constructions submits that Henley Arch has adduced no evidence of the "HENLEY PROPERTIES" Device Mark. Henley Constructions also submits, as above, that the "HENLEY PROPERTIES" Device Mark is not "substantially identical" to "HENLEY CONSTRUCTIONS". Henley Constructions submits that there is an entire prominent graphic device in the "HENLEY PROPERTIES" Device Mark that is absent from "HENLEY CONSTRUCTIONS". 654 Henley Constructions therefore submits that its hypothetical application would not be rejected pursuant to this ground and, even if the ground was made out, the application ought nevertheless be accepted under the discretion in s 55 of the TMA for the reasons set out in relation to Henley Constructions' submissions on the s 60 ground.

[108]

Section 44 - Henley Constructions' submissions on honest concurrent use 655 Henley Constructions submits that it has established honest concurrent use of the Henley Constructions trade mark in relation to building and construction services in New South Wales in relation to all such marks. Henley Constructions submits that it is therefore entitled to registration of such a mark in spite of Henley Arch's registered marks on the basis of s 44(3) of the TMA. 656 Henley Constructions submits that the relevant factors for determining whether or not Henley Constructions has engaged in honest concurrent use of the "HENLEY CONSTRUCTIONS" mark in relation to building and construction services in New South Wales are summarised in McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102 at [30] and [51]. 657 Henley Constructions submits that it adopted the "HENLEY CONSTRUCTIONS" mark honestly and has used the mark in a different geographic location to Henley Arch's alleged use, namely, in New South Wales. Henley Constructions submits that it also used this mark in relation to different construction services and with entirely different get up. Henley Constructions submits that this is because: (1) Henley Constructions only used its name in good faith in relation to construction services in New South Wales with a focus mostly on the construction of residential unit blocks in and around suburban Sydney. Mr Sarkis gave evidence that development activities have been "limited to the Sydney metropolitan area". (2) Henley Arch has traded in New South Wales under the name "Edgewater". (3) It is clear from the comparison of the branding on the Henley Arch website and the Henley Constructions website that entirely different get up is used to capture the attention of consumers. Henley Arch uses red colouring and triangular devices resembling a house roof, whilst Henley Constructions uses blue colouring and a block stack device resembling an apartment complex. Henley Constructions submits that the devices are not only different visually but convey different ideas to consumers as to the main focus of the businesses (ie houses versus multi story apartment complexes). (4) As to continuing honesty, there is simply no foreseeable motivation why a boutique apartment complex builder in Sydney, like Henley Constructions, would want to be associated with a Victorian-based project home builder like Henley Arch. 658 Henley Constructions submits that it is unsurprising that, throughout a long period of concurrent use (being approximately 13 years), Henley Arch has identified little in the way of alleged instances of confusion. It was submitted that this was because Henley Arch traded predominately in the detached home builder market in Victoria and did not know Henley Constructions existed in the multi-dwelling apartment complex construction market in New South Wales. 659 Henley Constructions submits that, in respect to the one specific alleged instance of confusion, involving Mr Damien Boyer, he was not confused, even momentarily. Henley Constructions also submits that there was no evidence of a relevant consumer of residential properties being confused, or evidence of the loss of a single sale by Henley Arch as a result of alleged confusion or the gain of one by Henley Constructions. 660 Henley Constructions submits that, on the issue of relevant inconvenience, it is difficult to see from the evidence what inconvenience Henley Arch could suffer from a geographically limited registration of the mark "HENLEY CONSTRUCTIONS". Henley Constructions submits that there would be a great deal of inconvenience to Henley Constructions if it was required to rebrand.

[110]

Section 60 - reputation 662 Henley Constructions submits that Henley Arch has not established a s 60 ground of opposition. Alternatively, Henley Constructions submits that, even if the s 60 ground of opposition was made out, it is proper for the Court, standing in the shoes of the Registrar, to exercise the discretion in s 55 of the TMA to nevertheless allow Henley Constructions' registration of the mark to be confined to the State of New South Wales. 663 Henley Constructions submits that Henley Arch's reputation in the name "Henley" is in Victoria, and Henley Arch has adopted alternate branding elsewhere, and most relevantly for present purposes, in New South Wales. 664 Henley Constructions submits that this adoption of alternate branding in different locations by Henley Arch is particularly relevant in relation to its claim under s 60 of the TMA. In Toddler Kindy Gymbaroo Pty Ltd v. Gymboree Pty Ltd [2000] FCA 618; (2000) 100 FCR 166, Moore J found that it was sufficient for a party relying on s 60 of the TMA to prove that a reputation acquired in one area of Australia, indeed still amounted to a reputation "in Australia" (i.e. the s 60(a) requirement). But, in addition, his Honour noted at [95] in relation to the facts before him: The registration of the GC mark was not geographically limited [cf the limitation on the Hypothetical Registration] and no submission was made that the geographical limits to the reputation impacted on the relevant operation of s.60. 665 Henley Constructions submits that the building and construction market is a localised market, not a national one, and Henley Arch's reputation in the "Henley" brand is in Victoria (and not in New South Wales). In other words, for the purposes of s 60(a) of the TMA, Henley Constructions submits that Henley Arch does not enjoy a national reputation in the "Henley" brand. Henley Arch submits that, even if the Court finds to the contrary, on the basis that the "substance" of Henley Arch's reputation in "Henley" is in Victoria, the requirement of likely deception or confusion in s 60(b) of the TMA is not satisfied in any event if one accepts that Henley Constructions' trade mark application would be limited to NSW. 666 Henley Constructions submits that because concurrent use of the relevant marks has, in fact, occurred over such a long period, and without any real instance of confusion, is evidence that building and construction services are indeed in localised markets. It is submitted that there is no likelihood of deception or confusion in line with s 60 of the TMA. 667 In addition, Henley Constructions submits that, even if s 60 of the TMA applies, the application should still be accepted as a matter of discretion under s 55 of the TMA, which grants the Registrar the power to, at the end of an opposition proceeding, refuse to register a trade mark or register it (with or without limitations) "having regard to the extent (if any) to which any ground on which the application was opposed has been established". 668 Henley Constructions submits that the exercise of discretion in this manner would accord with the importance of maintaining the integrity of the Register. In Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590 at [22], French CJ, Gummow, Heydon and Bell JJ observed: … [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have "integrity" and that it be "pure". It is a "public mischief" if the Register is not pure, for there is "public interest in [its] purity". The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function - to indicate the trade origins of the goods to which it is intended that they be applied. (Citations omitted.) 669 Henley Constructions submits that it would be an accurate record of many years of trading in the eyes of consumers in New South Wales for "HENLEY CONSTRUCTIONS" to be registered as a trade mark in that State.

[112]

Section 58 674 Section 58 of the TMA provides that "[t]he registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark". 675 In my view, s 58 is a basis upon which Henley Constructions' putative trade mark application would be refused. 676 The test for establishing "ownership" under s 58 requires assistance from the common law. The common law outlines two methods for establishing "ownership". The first is that, if an application for registration of a trade mark has not been filed, then the owner is the first person to use a trade mark for a particular good or service (or good or service that is the "same kind of thing": Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; 164 FCR 506 (Colorado)) (ownership by use). However, if ownership by use has not been made out, but an application to register the trade mark has been filed, then the person that has filed the trade mark will be regarded as the owner of the trade mark for which registration is sought in relation to the specified goods and services (and goods and services that are the "same kind of thing": Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601 per Dixon J at p 413) (ownership by first filing). 677 I am satisfied, on the evidence, that Henley Arch was the first to seek registration of the trade mark "HENLEY" and the "HENLEY PROPERTIES" Device Mark for "building and construction services" on 18 December 2006, and under common law, Henley Arch should be considered to have attained ownership by first filing. I am also satisfied, for the reasons which I have given above, that the mark "HENLEY CONSTRUCTIONS" for which the Hypothetical Registration is sought, is substantially identical to both the "HENLEY" trade mark and the "HENLEY PROPERTIES" Device Mark. 678 I am satisfied that the "HENLEY" mark had been first used by Henley Arch as a trade mark in relation to building and construction services, in respect to building detached houses and building of townhouses and terraces well prior to 18 December 2006, being the filing date of the "HENLEY" mark. Henley Arch's use of the "HENLEY" mark includes use of the henley.com.au website address prior to 2006, which was used to promote the building and construction of detached houses and the building of townhouses and terraces. 679 I am satisfied that to the extent that Henley Arch did not use the "HENLEY" mark or the "HENLEY PROPERTIES" Device Mark prior to 18 December 2006 in respect of building and construction services, Henley Arch is the proprietor of those marks by reason of Henley Arch's authorship of the marks, its application to register those marks on that date and its intention to use the marks for the full breadth of the specified services. A person who establishes ownership of a trade mark under s 58 will also be regarded as the owner of any trade mark that is substantially identical. In this case, if Henley Arch establishes ownership of the "HENLEY" mark or the "HENLEY PROPERTIES" Device Mark, it will be regarded as the owner of the substantially identical "HENLEY CONSTRUCTIONS" mark. 680 I accept Mr Harvey's evidence that, as a director of Henley Arch as early as 2000, he planned for Henley Arch to construct and market multi-dwelling developments being townhouses and terrace houses side by side, low rise and high rise apartments under the mark "HENLEY". 681 I accept Mr Harvey's evidence that, as at December 2006, Henley Arch had applied to register its trade marks and intended that those marks would be used for the full breadth of the services specified, which would include in relation to multi-dwelling housing developments. 682 Henley Constructions submits that there is a distinction that can be drawn between Narrow Services and the Broad Services. I reject that submission for the reasons that follow. 683 First, I have made relevant findings in respect of Mr Harvey's evidence above. Those findings include that, as at December 2006, Henley Arch had applied to register its relevant trade marks. It intended that those marks would be used for the breadth of the services specified, being "building and construction services" including multi-dwelling housing developments which included both low and high rise residential apartment buildings. As a consequence, the distinction between the Narrow Services and the Broad Services does not arise on the evidence as I have found. 684 Second, in Accor, the Full Court stated at [339]: As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations: (1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does "an hotelier" actually do? What precisely is involved in providing "property management services"? (2) To whom are the services offered? (3) How are they provided? (4) How are they used? (5) What is their purpose? (6) Are they bundled together with other services? (7) Are they differentiated by the functional level at which they are provided: wholesale or retail? (8) Where do they originate? (9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals? (10) How closely contestable are the services in substance: are they in the same market or trade? (11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]-[73]. 685 Having regard to that list of considerations, on the evidence which has been tendered by both parties, I find it impossible to separate the Narrow Services and the Broad Services. 686 First, there is no evidence that licences of builders in Australia are limited to particular classes of buildings. 687 Second, Mr Sarkis conceded, in cross-examination, that the role of a builder is to "work with clients, architects, and subcontractors toward the common goal of successful project delivery", to "ensure that for each project that [it is] matched with appropriate resources and expertise", and that he would employ the "right people for the right job" whether small or large: Transcript, 311. That type of service is not referable to the type of project being constructed. In cross-examination, Mr Sarkis accepted that Henley Constructions' role 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. That evidence was similar to the evidence given by Mr Harvey. 688 Third, in cross-examination, Mr Sarkis accepted that Henley Constructions' website as at 9 April 2013 stated that, "[f]rom small interior renovations to large apartment blocks, the foundation of all [of Henley Constructions'] construction is solid relationships with … clients". Mr Sarkis accepted that this meant the public would expect Henley Construction to be able to build an interior renovation, a detached home and a large apartment block. Having reviewed the evidence in this proceeding, in my view, Henley Constructions essentially marketed itself as a builder of residential properties. 689 Fourth, in relation to the materials and work involved in a single detached dwelling versus an apartment building, Mr Sarkis agreed that the differences in the required activities between some houses and some apartment buildings might not be great, or simply depended on the nature of the site and building. 690 Fifth, one of Henley Constructions witnesses, Mr Tatian, accepted that a licensed builder (at least in New South Wales) is permitted to do all kinds of work and that the role of the builder is to employ people with the necessary skills to do the job, and, while skills may vary, a consumer would not know whether someone could or could not do a specific kind of building work. 691 In addition, there is nothing in the evidence of Mr Tatian, Mr Prentice or Mr Becerra which has persuaded me that building apartments is a relevantly different service to building detached houses, or at least that those services can be precisely distinguished in the manner contended by Henley Constructions. On the evidence, I am not persuaded that a consumer would perceive the services as being segmented by reference to apartments or detached houses. In my view, the evidence discloses that there is a high degree of overlap between the steps required to build a house and the steps required to build an apartment block. By way of example, while Mr Becerra's evidence was directed to proving a difference between house construction and apartment construction, in cross-examination, Mr Becerra accepted that an architect's role on a project depends on the commission an architect is undertaking. Mr Becerra also accepted that his clients would expect an architect to ensure that the architect's role of integrating the work of various design professionals occurs whether or not the client is a client for a single detached building or an apartment block. Mr Sarkis's and Mr Harvey's evidence (which I have already referred to) in relation to the role of a builder was to similar effect. Moreover, Henley Constructions' other relevant witness, Mr Tatian, accepted that, generally, in construction of any structure, there are overlaps as to the steps that need to be undertaken. 692 In my view, the building and construction of multi-dwelling residential apartment buildings is the "same kind of thing" as the building of single dwellings (whether detached or shared wall) that are not apartments. On the evidence, I am of the view, that they are services of the same description: a consumer, knowing of a mark which has been used in respect of building single dwellings (including rows of townhouses), would be caused to wonder whether the use of the same or a similar mark for the building of an apartment block meant the same or an associated builder was responsible for both. 693 In these circumstances, by reason of s 58 of the TMA, I do not accept that Henley Constructions would obtain registration of "HENLEY CONSTRUCTIONS" if Henley Constructions were to apply for it. As a consequence, this aspect of Henley Constructions' purported defence under s 122(1)(fa) of the TMA fails.

[113]

Section 44 694 In my view, s 44 of the TMA is a basis upon which Henley Constructions' putative trade mark application would be refused. 695 It was not in dispute that "HENLEY CONSTRUCTIONS" is deceptively similar to the registered "HENLEY" mark, as Henley Constructions previously admitted this in its Second Further Amended Statement of Cross-Claim at [31]. It is not in dispute that each of the Broad Services and Narrow Services fall within the designated services for Henley's registered marks. It was also not in dispute that the priority date of the "HENLEY" trade mark is 18 December 2006, which is earlier than Henley Constructions' first use of "HENLEY CONSTRUCTIONS" in respect of the relevant services, which I have found to occur from 10 February 2007. As a consequence, Henley Constructions could not obtain registration of the mark, the subject of any hypothetical application, unless it establishes honest concurrent use of the mark "HENLEY CONSTRUCTIONS" pursuant to s 44(3)(a) of the TMA or unless it establishes "other circumstances" making it proper to accept the mark "HENLEY CONSTRUCTIONS" for registration, pursuant to s 44(3)(b) of the TMA. 696 I do not accept that Henley Constructions has established honest concurrent use of "HENLEY CONSTRUCTIONS" pursuant to s 44(3)(a) of the TMA, or the existence of "other circumstances" making it proper to accept "HENLEY CONSTRUCTIONS" for registration, pursuant to s 44(3)(b) of the TMA. 697 As to honest concurrent use, in Community First Credit Union Limited v Bendigo and Adelaide Bank Limited [2019] FCA 1553; 146 IPR 185, Markovic J stated at [461]: The first issue to consider is whether CFCU has engaged in honest concurrent use of the CFCU marks pursuant to s 44(3)(a) of the TM Act as it contends it has. In McCormick at [30]-[32] Kenny J, in considering whether there had been honest concurrent use of the trade marks in issue, said the following about s 44(3): 30 Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include: (1) the honesty of the concurrent use; (2) the extent of the use in terms of time, geographic area and volume of sales; (3) the degree of confusion likely to ensue between the marks in question; (4) whether any instances of confusion have been proved; and (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted. See Re Alex Pirie & Sons Ltd's Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-60; Re John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister (1997) 37 IPR 306 at 310-11. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see Re Electrix Ltd's Application [1957] RPC 369 at 379. The honesty of the use 31 The rights of the parties are to be determined as at the date of the application for registration - in this case, 9 March 1992: Southern Cross at 594-5; Re Simac SpA Macchine Alimentari's Application (1987) 10 IPR 81 at 90-1 (Simac); Aromas Pty Ltd v Aroma Coffee & Tea Co Pty Ltd (1997) 40 IPR 75 at 86 (Aromas); and Trepper v Miss Selfridge Ltd (1991) 23 IPR 335 at 346. 32 The honesty of concurrent use refers to "commercial honesty, which differs not from common honesty": see In Re Parkington & Co Ltd's Application (1946) 63 RPC 171 at 182. In that case, Romer J said at 181-2: [T]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. … (Emphasis added.) 698 I do not accept that Henley Constructions engaged in honest concurrent use of the mark "HENLEY CONSTRUCTIONS" in relation to building and construction services in New South Wales. I am of that opinion for the reasons that follow. 699 First, honest concurrent use is one of the statutory limbs in s 44(3)(a) of the TMA. I have found, for the reasons given above, that Mrs Sarkis, in 2006, conducted Google searches of building and construction companies and, as a result, came across the name Henley Properties Group and the henley.com.au website in searching the internet to find a building company name. I also have found that Mrs Sarkis, when she conducted a Google search in 2006 for the name "Henley Constructions", observed the Google search results relating to the Henley Properties Group website. I found that Mrs Sarkis came across the henley.com.au website and knew that the name "Henley" had been used by Henley Properties Group, who operated a business in Victoria, South Australia and Queensland in respect of building and constructing homes. I have found that Mrs Sarkis, after conducting the Google search, conducted an ASIC search and saw that the names "Henley Developments" and "Henley Constructions" were available to be registered with ASIC. That is why Mrs Sarkis put the name "Henley D's/C's" on the relevant shortlist. I have found that Mrs Sarkis told Mr Sarkis about the Henley Properties Group website and that she had conducted ASIC searches and ascertained that the names "Henley Properties" and "Henley Constructions" were available to be registered with ASIC. 700 Second, I have found, for the reasons stated above, 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". I have found that 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, henley.com.au, and the use of the names "Henley Properties Group" and "Henley". I have found that Mr Sarkis had knowledge of Henley Arch's use of the "HENLEY PROPERTIES" Device Mark and the "HENLEY" mark prior to the incorporation of Henley Constructions on 13 December 2006. I have found that, prior to the incorporation of Henley Constructions, Mr Sarkis had been informed by Mrs Sarkis that the names "Henley Constructions" and "Henley Developments" were available to be registered on the ASIC register. I have found that Mr Sarkis, with that knowledge, had Mr Murabak obtain registration of both those names for the benefit of Henley Constructions. 701 Third, I have found that, by reason of his conversation with Mr Napier prior to, or after the incorporation of Henley Constructions on 13 December 2006, Mr Sarkis was on notice that there was a company in Sydney that had used the name "Henley Constructions". 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. 702 In these circumstances, I do not accept that Mrs Sarkis, Mr Sarkis and Henley Constructions acted with "commercial honesty" or acted with "common honesty" when they applied to ASIC to register the names "Henley Constructions" and "Henley Developments", or when they adopted and continued to use the name "Henley Constructions". The use of the name "Henley Constructions" has been tainted by that dishonesty from the date of adoption. That is because I have found that Mrs Sarkis, Mr Sarkis and Henley Constructions (Mr Sarkis being the sole director and shareholder of Henley Constructions), at the date of adopting the name "Henley Constructions", knew of the business of Henley Arch and its use of the names "Henley Properties Group" and "Henley" prior to incorporating Henley Constructions and prior to obtaining registration with ASIC for the names "Henley Constructions" and "Henley Developments". 703 Fifth, I reject Henley Constructions' submissions that it adopted the mark honestly and used the mark in a different geographic location to Henley Arch, namely, New South Wales, in relation to particular building and construction services, being building multi-dwelling apartment complexes. That is because prior to incorporation of Henley Constructions on 13 December 2006 and prior to the registration of the names "Henley Constructions" with ASIC, Mrs Sarkis, Mr Sarkis and Henley Constructions knew of the existence of Henley Arch's business and its use of the names "Henley Properties Group" and "Henley". In those circumstances, from the moment the mark "HENLEY CONSTRUCTIONS" was used from 10 February 2007, that use was not honest. 704 Sixth, having regard to the matters already set out, I do not accept that there are "other circumstances" making it proper to accept "HENLEY CONSTRUCTIONS" for registration, pursuant to s 44(3)(b) of the TMA. Given that, from the moment the mark "HENLEY CONSTRUCTIONS" was used from 10 February 2007, that use was not honest, it cannot be "proper" to accept "HENLEY CONSTRUCTIONS" for registration pursuant to s 44(3)(b) of the TMA. 705 For these reasons, I do not accept that Henley Constructions would obtain or would have obtained registration of "HENLEY CONSTRUCTIONS" if Henley Constructions were to apply for it, or had applied as at 10 February 2007. Henley Constructions has failed to establish its defence under s 122(1)(fa).

[115]

Section 60 710 I have set out the terms of s 60 of the TMA above. 711 In Monster Energy Company v Mixi Inc [2020] FCA 1398; 156 IPR 378, Stewart J stated at [13]-[22]: The purpose of s 60 is to provide protection for well-known marks, whether registered or not, by preventing the registration of a trade mark if there is a likelihood of deception or confusion because of the reputation of the well-known mark in Australia as at the priority date: Explanatory Memorandum, Trade Marks Amendment Bill 2006 (Cth) at [4.10(1)]. Reputation in this context connotes the "recognition of [the mark] by the public generally" and includes the credit, image and values projected by the trade mark: McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102 at [81] and [85] per Kenny J. Reputation within the jurisdiction may be proved by a variety of means including advertisements in public media within the jurisdiction. It may be established by showing constant travel of people between other countries and the jurisdiction, and that people within the jurisdiction (whether residents here or persons simply visiting here from other countries) are exposed to the goods of the overseas owner. See ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176; 33 FCR 302 at 343 per Lockhart J, but see also at 348 with regard to limited use of statistics of international travel. The assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures. The quantum of sales, advertising and promotions contribute to the "recognition" component of reputation. The credit, image and values projected by a trade mark attach to the "esteem" component of the reputation, as do the public events and other traders' marks with which the owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, and so forth. See Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG [1999] ATMO 23; 47 IPR 423 at 436, adopted in McCormick at [85]. It has long been recognised that brand recognition, and therefore reputation of a trade mark, does not depend on direct advertising. Indirect advertising strategies are adopted precisely because they are effective, and in considering the reputation of a mark indirect advertising must be given proper consideration. See Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181; 171 FCR 579 at [60]-[64] per Finkelstein J; Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [336] and [438] per Dodds-Streeton J; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923; 370 ALR 140 at [84(h)] per O'Bryan J. The likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark. The relevant comparison is between the reputation of the prior mark derived from actual use of that mark, and a notional normal and fair use of the mark sought to be registered in respect of each of the goods or services covered by the specification. See Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 294 ALR 661 at [113]-[114] per Nicholas J, Dowsett J agreeing. The use to which the opposed mark has actually been put is of limited relevance. That is because it is the notional normal and fair use of that mark in respect of each of the goods or services covered by the specification that is relevant, and the mark, as in this case, might only have been used in relation to a very limited number of those goods or services. However, evidence as to the way in which the mark has actually been used may be regarded, in the absence of any reason to suppose otherwise, as illustrative of what would be normal and fair: Electrocoin Automatics Ltd v Coinworld Ltd [2004] EWHC 1498 (Ch) at [21]. The objection under s 60 of the TM Act is not based on the requirement that the allegedly conflicting marks are substantially identical or deceptively similar. The question is purely one of prior reputation. Nevertheless, the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark. See Qantas Airways Ltd v Edwards [2016] FCA 729; 338 ALR 134 at [142] per Yates J. The parties place different emphasis on the relevance of the prior mark not having acquired a reputation in respect of the specific goods or services that are the subject of the proposed application. MEC draws attention to McCormick at [85] where statements are made that the volume of a company's sales does not directly establish that a significant number of people held the relevant marks, as distinct from the company's products, in favourable regard, and to the statement in Qantas at [143] that the prior mark need not have acquired a reputation that is specific to the goods or services which are the subject of the opposed application. Mixi draws attention to the statements in GAIN Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA 519; 123 IPR 234 at [148] and [169] per Markovic J, citing Hill Industries Ltd v Bitek Pty Ltd [2011] FCA 94; 214 FCR 396 at [208], that where an opponent has a reputation in particular goods or services but that reputation does not encompass the goods or services for which registration is sought, that may be a basis for finding that the ground of opposition is not made out. See also Singtel Optus Pty Ltd v Optum Inc [2018] FCA 575; 140 IPR 1 at [203] per Davies J; Rodney Jane at [87], [116] and [149]-[150]. The tests for deception and confusion hinge on the question of whether or not a reasonable number of people may be caused to wonder if a trade connection exists between the marks: Explanatory Memorandum at [4.10(3)], Southern Cross at 595; McCormick at [82]. A mere possibility of confusion is not enough - there must be a real, tangible danger of it occurring: Southern Cross at 595. Evidence of actual confusion is not required: Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; 129 CLR 353 at 355 per Barwick CJ. 712 I have found above, in relation to the ACL claim, that Henley Arch had a significant reputation throughout Victoria, Queensland and South Australia which extended into New South Wales. I also find that Henley Arch's reputation was not limited to single dwelling detached homes but extended to multi-dwelling residential townhouses or, more generally, as a builder of homes. In this respect: (1) As stated above in relation to the ACL claim, I am not persuaded on the evidence that the relevant class of the public would understand and appreciate the differences in construction between detached single dwelling homes, townhouses and multi-dwelling residential apartment buildings. There is no evidence that the relevant class of the public would understand or appreciate the differences in construction. Indeed, the evidence of Mr Beccera and Mr Tatian was that there can be a lot of overlap between the steps involved and complexity of designing and constructing a detached house compared with the design and construction of apartments. (2) As stated below, in relation to Henley Constructions' cross-claim concerning alleged non-use, Mr Harvey's evidence was that 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. Mr Harvey also gave evidence 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. (3) This latter evidence was similar to the evidence of Mr Sarkis. In relation to the materials and work involved in a single detached dwelling versus an apartment building, Mr Sarkis agreed these could be the same (eg, formwork, sheet piling, slab construction, "roughing-in", sound proofing, fire alarms and sprinklers): Transcript, pp 337-338. Mr Sarkis agreed that the amount of work involved and differences in the work between some houses and some apartment buildings might not be great or simply depended ("it depends") on the nature of the site and building: Transcript, p 339. (4) In addition, in my view, the evidence of Mr Becerra and Mr Tatian, can be fairly characterised as accepting that there is a degree of overlap between the steps required, and the essential role of a builder or architect, in the construction of any structure, whether that structure be a house or an apartment block. (5) Having regard to the evidence tendered in this proceeding, I have been persuaded by Henley Arch that there is not a meaningful distinction between, on the one hand, building and construction services and, on the other hand, building and construction services in respect of multi-dwelling residential apartments. 713 In these circumstances, in my view, at all relevant times, Henley Arch's registered marks held a substantial reputation in respect of, at least, building and construction of single dwelling detached homes and townhouses. Such a reputation is a relevant reputation in "Australia" for the purposes of s 60(a) of the TMA in accordance with Pham Global. I accept Henley Arch's submissions in this regard. 714 For the reasons already given in relation to trade mark infringement and the ACL claim, in my view, the use of the "HENLEY CONSTRUCTIONS" mark would be likely to deceive or cause confusion in that a reasonable number of people may be caused to wonder if a trade connection exists between Henley Arch and Henley Constructions. Indeed, that is precisely what occurred when Mr Boyer first read the name "Henley Constructions". Mr Boyer, a former sales representative of James Hardie, a supplier to Henley Arch, gave evidence that, when he saw the name "Henley Constructions", this caused him to email Henley Arch to enquire as to whether there was an association. In my view, that provides actual evidence of a well-informed consumer, after merely reading the name "Henley Constructions", being caused to wonder whether Henley Constructions was connected with Henley Arch. That is because Mr Boyer entertained the possibility that Henley Constructions was associated with Henley Arch (the subject line of Mr Boyer's relevant email was: "Guys, does the below business based in Sydney [namely, Henley Constructions,] have anything at all to do with [Henley Arch]?"). 715 Having considered the evidence above regarding Henley Arch's reputation in Australia, I find that the relevant Henley Arch marks had acquired a reputation in Australia amongst a significant section of the public and as a result s 60 is made out.

[119]

Henley Constructions' submissions 718 Henley Constructions submits that this defence applies to use in the absence of the corporate designation, namely in absence of the "pty ltd" after "Henley Constructions": Optical 88 (No 2) at [160]. It is also accepted that the defence does not apply to use of "Henley" solus. 719 The question, in Henley Constructions' submission, is whether the "HENLEY CONSTRUCTIONS" mark has been used in good faith. 720 Henley Constructions submits that the requirement of establishing good faith adoption of one's own name is centred on the ordinary concept of honesty: Optical 88 (No 2) at [161]. Henley Constructions relies upon the reasoning of Beach J in Flexopack at [108] and [111]. 721 Henley Constructions submits that, in considering what is "good faith", the Court must take into account the circumstances personal to the individual who adopted the mark to determine if they were "honest and reasonable" in the steps they took per Beach J in Flexopack at [111] In this case, that involves an assessment of the conduct of Mr and Mrs Sarkis. 722 Henley Constructions submits that, after being put on notice of Henley Arch's allegations of trade mark infringement by letter dated 13 April 2017, Henley Constructions can still rely upon the protection of the good faith defence in s 122(1)(a)(i) of the TMA: Parker-Knoll Ltd v Knoll International Ltd [1961] RPC 346 at p. 363. 723 Henley Constructions submits that the evidence of both Mr and Mrs Sarkis should be accepted. Henley Constructions submits that Mr and Mrs Sarkis's evidence provides detailed evidence of why they honestly chose the name Henley Constructions and why they used the name in good faith after being put on notice of Henley Arch's allegations of infringement. 724 Henley Constructions' closing submissions at [81]-[94] set out in detail the evidence and submissions which it relied upon to ultimately submit that Mr and Mrs Sarkis acted honestly when they chose the name Henley Constructions.

[120]

Henley Arch's submissions 725 Henley Arch submits that Henley Constructions cannot establish the requisite element of good faith. 726 Henley Arch submits that the respondents bear the onus of establishing, on the balance of probabilities, the requisite good faith: Flexopack at [103]. 727 Henley Arch submits that "good faith" in the own name defence requires an honest belief that "at the time of adopting the mark … no confusion would arise by reference to the earlier trade mark's reputation and that there was no intention to divert trade", per Beach J in Flexopack at [108] citing Australian Postal Corporation v Digital Post Australia Pty Ltd (2013) 308 ALR 1; 105 IPR 1; [2013] FCAFC 153 at [73] and [74] per North, Middleton and Barker JJ. Henley Arch submits that this is a "necessary but not sufficient condition", with Beach J concluding that "good faith" might be lost over time, and involves an "objective" test which may not be satisfied even if, subjectively, the infringer was unaware of the earlier trade mark; Flexopack at [108]. Henley Arch submits that searches performed by the IP Australia examiner in March 2007 (which were in evidence) show that around the relevant time, proper searches ought to have been conducted by Henley Constructions. Henley Arch submits that its website did not change over the relevant period and Mrs Sarkis knew how to perform, and had performed, Google searches prior to 2006. 728 Henley Arch contends that the alleged infringer must take adequate steps to obtain advice regarding freedom to operate under the proposed trade mark and the advice must clearly set out that adequate searches were performed (eg, Google searches if the advice is being sought to be relied on in answer to an assertion that the infringer themselves did not perform such searches) and that any potential conflicts with other marks were properly considered and set aside as of no concern. 729 Henley Arch accepted that use of "Henley Constructions" and "henleyconstructions.com.au" is use by Henley Constructions of its own name. However, Henley Arch did not accept that was the case for use of "Henley", "Henley Gallery", "1300HENLEY", "The Henley Display Gallery", "#henleygallery", "#henley" or "HNLY" marks. As to the use of Henley Constructions' signs on cranes at night, at reference I of the Particulars Table, Henley Arch submits that, on the evidence, the public could only see the word "HENLEY" and that is not use of Henley Constructions' own name. 730 Henley Arch submits that the evidence of Mr and Mrs Sarkis was that Mrs Sarkis suggested the name "Henley Constructions" in a shortlist of other potential company names she had devised in the period between October 2006 and December 2006. 731 Henley Arch submits that Mrs Sarkis conducted Google searches of the meaning of the name "Henley", and used Google to search the names of companies on her shortlist with the additional words "development" and/or "constructions". Henley Arch contends that, during cross-examination, Mrs Sarkis stated that she also conducted Google searches for the name "Henley Constructions", which Henley Arch submits was not mentioned in her evidence-in-chief. 732 Henley Arch submits that evidence led by Mrs Sarkis, in that she did not come across Henley Arch's website during the course of her Google searches, is not credible. Henley Arch submits that the records of the Australian Trade Marks Office (ATMO) (which were in evidence) show that, when the ATMO was assessing Henley Arch's application for its trade mark "HENLEY", the ATMO examiner conducted similar searches in March 2007, being only a few months later than the searches conducted by Mrs Sarkis. Those records show that Henley Arch's website was returned as the second search result. Henley Arch submits that Mrs Sarkis's searches on Google would have returned the same search results as recorded by the ATMO examiner, whether they were for the word "Henley" alone (as it is contended she did) or "Henley Constructions" (which she contended she did). 733 Henley Arch submits that, on the evidence, it should be accepted that Mrs Sarkis found Henley Arch's website and told Mr Sarkis about it. 734 Henley Arch submits that there are discrepancies between Henley Constructions' Amended Defence and the evidence of Mrs Sarkis's evidence which have not been explained. 735 Henley Arch submits that internet searches of the names on Mrs Sarkis's shortlist of names would have easily identified existing industry traders. Henley Arch submits that the conclusion can be drawn that Mr and Mrs Sarkis were both happy to proceed with a company name that was confusingly close to an existing trader in the industry, provided it could be registered with ASIC. 736 Henley Arch submits that Ms Lawrence's evidence identifies websites of other traders in the industry that would have been visible to Mr and Mrs Sarkis at the time if they had conducted internet searches. Henley Arch submits that it should be inferred that, before December 2006, these websites were available, and these traders were projecting themselves into the market via their websites. 737 Henley Arch submits that, even if the Court were to accept the evidence of Mr and Mrs Sarkis regarding the inquires they conducted, the inquiries of Mr and Mrs Sarkis fall short of what could be considered reasonable searches, acting in good faith. Henley Arch submits that, objectively, their actions fall short of the standard required to show a good faith honest belief. Henley Arch submits that a reasonable person would have conducted their own internet searches for the term "Henley" in order to see whether any competitor existed for what would become Australia's biggest builder/developer. 738 Henley Arch submits that, after receipt of Henley Arch's letter of demand, Henley Constructions' trade mark use changed and intensified. Henley Arch contends that this new use increased the potential for consumer confusion with its own trade marks. Henley Arch submits that Henley Constructions cannot assert that it has acted in good faith in using its own name given its change in conduct since the letter of demand.

[121]

Consideration - principles of good faith 739 The element of "good faith" in the own name defence requires an honest belief that no confusion would arise by reference to the earlier trade mark's reputation and that there was no intention to divert trade; Flexopack at [108]. This also requires direct evidence that Henley Constructions "honestly thought that no confusion would arise" in using the relevant marks. 740 In this regard, Allsop J (as the Chief Justice then was) observed in Anheuser-Busch at [216] and [219], that: …it is clear that the Court of Appeal required for there to be 'bona fide use' that 'the trader honestly thought that no confusion would arise'. No witness for the first respondent so deposed. No witness explained why it was thought inappropriate (if anyone did so think) to use Budějovick [yacute] Budvar, Národní Podnik as the company name and why it was thought appropriate to use a name with 'Budweiser' in it. Rather, the only explanation was that it is the 'English' name in the Court Register. However, as I have elsewhere noted, the case was conducted on the basis that there was no paramount Czech law requiring the use of this name in Australia. The using of a name including 'Budweiser' was informed by a moral claim and, no doubt, a belief in a legal claim. However, the likely existence of a reputation of its rival in the territory was known. At best, the first respondent was only unaware of its strength. In these circumstances, if it had been positively believed that there would be no confusion, I think someone would have said so. I think that if one were aware of the reputation of 'Budweiser' and 'Bud' in Australia, it would be tolerably clear that despite the get-up differences and the obviously European source, there could well be some confusion in consumers as to whether this 'Budweiser' did, or did not, have some connection with the 'Budweiser' with which they were familiar. If Mr Bocek, as he says, was not aware from his company's research of the 'level' or quality of the reputation of 'Budweiser' in Australia, that does not assist his or the first respondent's position. He knew of a reputation. He knew of wide sales around the world of Anheuser-Busch's 'Budweiser' beer. He must have known that, as was the fact, it could well be the case that the 'Budweiser' reputation was not insignificant in Australia. It is hard to see how he and his company could be sure, or could hold the view, that no confusion would arise. They have not persuaded me that anyone did hold that view. In these circumstances, I think it can be said that, though the first respondent and Mr Bocek were not consciously dishonest, the first respondent did not use, and does not intend to use, its own name in good faith for the purposes of s 122 of the TM Act. … Mr Yates submitted that it is the use which must be in good faith, not the choice of name to use. Ordinarily this will be so; but where there are alternative names available to the party, I do not see why the choice of one over the other is not, or may not, as here, be part of the analysis of the question of use. 741 A finding of "good faith" involves an objective element, which may not be satisfied even if, subjectively, the infringer was unaware of the earlier trade mark. Rather, it requires the alleged infringer to undertake reasonable steps to show that they acted in accordance with best commercial practices and took appropriate action to identify if there were any existing trade marks which could undermine their mark, as Beach J stated in Flexopack at [111]-[119] and [142]: The test to be applied is in one sense objective. If a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then they are not acting in good faith. If the Respondents are to avail themselves of this defence they must show that their conduct was in good faith. The onus rests on them. Further, good faith might, for example, be shown by showing that legal advice was sought. In the present case, the Respondents do not rely on any such advice. Sixth, the position in the United Kingdom, which deals with analogous legislation enforcing European Community Trade Marks, is not unhelpful in considering what conduct constitutes good faith. Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark Article 12 states as follows: A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own name or address; ... provided he uses them in accordance with honest practices in industrial or commercial matters. (emphasis added) The United Kingdom applies an objective test. This provision was discussed by Arnold J in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2008] EWHC 3032 (Ch); (2008) 79 IPR 621 at [142] to [152] (confirmed on appeal in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110). Cipriani noted at [151] and [152] that the assessment of the defence required an objective consideration of the steps taken by the relevant person in adopting the company name. Such an approach is consistent with the approach taken by Allsop J (as he was then) in Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik [2002] FCA 390; (2002) 56 IPR 182 at [193] to [219]. The mere ignorance of the trade mark is not sufficient to enliven the defence. Moreover, a lack of fraud or a lack of conscious dishonesty does not establish the flip-side requirement of good faith. I accept though that Anheuser-Busch Inc has distinguishing features that are not present in my case. Seventh, in my view, good faith in s 122 is properly interpreted as requiring reasonable diligence to ascertain that a chosen name does not conflict with a registered trade mark. There are good policy reasons for this. The Agreement on Trade-Related Aspects of Intellectual Property Rights (in effect from 1 January 1995) is administered by the World Trade Organisation (WTO). It arose out of the 1986-1994 Uruguay Round negotiations and the Marrakesh Declaration of 15 April 1994. It sets down minimum standards for intellectual property regulation in respect of WTO members. Both Australia and the United Kingdom are relevant members. Article 17 states: Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties. If only subjective knowledge was relevant, a person could use the good faith defence despite not having taken any appropriate steps to inform himself of any relevant existing trade marks. This has the potential to undermine the utility of a registered trade mark. The reasonableness or lack thereof of the steps undertaken by the First Respondent in the choice of its company name is to be considered in light of the effect on the trade mark owner. If good faith were to be construed as merely being satisfied on the basis of a stated subjective belief that one did not know of the other, it could lead to a situation where one could justify trade mark use with one's ignorance. The failure to make proper inquiries should not place a respondent in a better position than if such inquiries had been made. … … A person seeking to identify whether a name is available for use could have quickly and simply conducted a Google search. I have significant doubts as to the veracity of Mr Katelis' denial on this aspect that he did not carry out such a search. It was not disputed, as I understood it, that a general Google search would have thrown up the Applicant. (Emphasis added.) 742 This objective element identified by Beach J in Flexopack, being the lack of reasonable care in carrying out searches, was also identified as a reason why honest concurrent use of the mark should be rejected in Pham Global at [103], where the Full Court stated: Thus, IR's use of its name from 17 June 2013 was not in good faith. This is so whether or not the test of good faith is purely subjective or also contains some objective element (see Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239 at [107]-[118]). The primary judge was correct to reject IR's contention. Her Honour was also, in our view, correct to reject the contention of honest concurrent use given the unchallenged finding that there had been "a lack of diligence and reasonable care in carrying out adequate searches before the marks were adopted for use by Insight Radiology" (at [125]), based on the reasoning in Flexopack . 743 In Insight Radiology at [111], Davies J stated: … Given Mrs Pham's testimony that her purpose in conducting the Google searches was to determine if there were any radiology companies in Australia using the names "Insight Diagnostic", "Insight Imaging" or "Insight Radiology", it is a reasonable inference that had Mrs Pham done a proper and diligent search to ascertain whether the name "Insight Radiology" was available for use, she would have viewed Insight Clinical Imaging's website at the time had she conducted the searches. Moreover, the evidence about Insight Clinical Imaging's website established that had Mrs Pham searched the website at the time, the website would have shown the ICI trade marks and their use in connection with promoting Insight Clinical Imaging's radiology services business. (Emphasis added.) 744 While the own name defence failed in that case because Insight Radiology had changed its name after being put on notice, it is apparent from the above, that her Honour did not view Mrs Pham's searches and investigations to have been objectively sufficient. 745 This is made more clear in the context of honest concurrent use where her Honour observed at [125]: The evidence does not support a finding that either Mr or Mrs Pham knew about the use of similar marks by Insight Clinical Imaging before Insight Radiology commenced using the Radiology marks. Nonetheless, I do not think that it can be said that there has been honest concurrent use of the Radiology marks. In Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [293], Dodds-Streeton J found there had not been honest concurrent use in circumstances where, amongst other things, the applicant had failed to carry out an adequate search, seek professional advice or take reasonable precautions in relation to its adoption of a trade mark. In Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239, Beach J considered that if a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then the person is not acting in good faith in the sense of "honestly" within the terms of the good faith "own name" defence under s 122(1)(a) of the Trade Marks Act. In the present case, I have accepted the expert's evidence that the Google search that Mrs Pham conducted would have come up with Insight Clinical Imaging. Had reasonable diligence been exercised by her at the time, it is reasonable to expect that she would have searched the website and found out that Insight Clinical Imaging was trading in the same field, using similar marks. Whilst there is insufficient evidence from which to conclude that she had looked at the website, the evidence does point to a failure on her part to conduct an [sic] proper and adequate search, either because her search was not sufficiently comprehensive to bring up the website in the search result or, if it did, because she failed to visit the website. Furthermore, no searches were done once the IR composite mark had been designed to check whether there were any similar marks used by other traders or before Insight Radiology commenced using the logo. These matters demonstrate a lack of diligence and reasonable care in carrying out adequate searches before the marks were adopted for use by Insight Radiology. It cannot be said that there has been "honest" concurrent use of the Radiology marks within the terms of s 44(3) when the searches, if conducted properly, would have come up with Insight Clinical Imaging's website and its similar marks. If Mr Pham was not aware of Insight Clinical Imaging's marks before he had Insight Radiology adopt and commence to use the Radiology marks, it was because of the inadequacies in the searches that were conducted and lack of care taken. 746 This finding was not disturbed by the Full Court in Pham Global.

[122]

Consideration - application to facts 747 Henley Constructions cannot succeed in establishing that it, at all times, used the name "Henley Constructions" and occasionally the name "Henley" in good faith as the name of its business: see Amended Defence, particulars to [19] and [34]. This is because, from its very first use on 10 February 2007, Mrs Sarkis, Mr Sarkis and Henley Constructions knew of the existence of Henley Arch's business which was promoted by use of the website www.henley.com.au and the "HENLEY PROPERTIES" Device Mark in connection with building and construction services. I reject Mr and Mr Sarkis's and Henley Constructions' evidence that they did not know of the existence of Henley Arch's business, its use of the website www.henley.com.au and its use of the "HENLEY PROPERTIES" Device Mark and the "HENLEY" trade mark in connection with the promotion of Henley Arch's building and construction services. 748 Furthermore, I find, on the evidence, that after being put on notice by Henley Arch's cease and desist letter on 13 April 2017, Henley Constructions "ramped up" its promotional activity of the mark "HENLEY CONSTRUCTIONS" and, in a new logo, increased the size of the dominant word "Henley" and reduced the size of the descriptive word "Constructions" such that it became more likely that consumers would be confused in this regard. 749 Arising from Beach J's analysis in Flexopack are two relevant matters. First, if, after being put on notice, Henley Constructions changed its use of its mark (as it did in this case as referred to above) so as to heighten the potentiality for confusion in a less than honest way, the own name defence will no longer apply. That is what Henley Constructions has indeed done after being put on notice by Henley Arch of its infringing use of the mark "HENLEY CONSTRUCTIONS" on 13 April 2017. The change in the mark so as to increase the size of the dominant word "Henley" and decrease the size of the descriptive word "Constructions" means that the good faith use of own name defence is no longer available. Henley Constructions, in 2017, also significantly increased its expenditure on advertising and marketing. There was a tenfold increase in such expenditure in 2017. I have referred to this evidence earlier in these reasons. 750 Furthermore, after Henley Constructions had been put on notice on 13 April 2017, that Henley Arch claimed that the use of the mark "HENLEY CONSTRUCTIONS" infringed its registered trade marks, the potential for confusion would have been plainly obvious to Henley Constructions and Mr Sarkis. Yet, notwithstanding this, Henley Constructions continued to use the mark "HENLEY CONSTRUCTIONS" and, indeed, on the evidence, "ramped up" its use of that name. I have made findings as to this "ramping up" in the section above titled "Findings on Henley Constructions' conduct after receipt of letter of demand". 751 In the present case, it is not necessary for me to determine whether the test for lack of good faith involves some objective element, as I have found that Mr and Mrs Sarkis subjectively knew of the existence of Henley Arch's business which was promoted by the use of the website www.henley.com.au as well as the "HENLEY PROPERTIES" Device Mark and the "HENLEY" mark in connection with building and construction services. Mr and Mrs Sarkis knew of these matters prior to the incorporation of Henley Constructions on 13 December 2006 and prior to first using the mark "HENLEY CONSTRUCTIONS" on 10 February 2007. 752 In these circumstances, Henley Constructions cannot avail itself of the good faith use of own name defence under s 122(1)(a)(i) of the TMA. 753 Even if Mr and Mrs Sarkis did not know of the matters referred to above, the inquiries of Mr and Mrs Sarkis fall short of what could be considered reasonable searches, acting in good faith. Assuming Mr and Mrs Sarkis's evidence was to be accepted, a reasonable person would have conducted their own internet searches for the term "Henley" in order to properly and diligently assess whether any competitor existed for what would become Australia's biggest builder/developer. Mr Sarkis did no such searches. At most, it can be said that searches were conducted of ASIC's register of company names. I do not accept that such searches are reasonable, given they only retrieve the names of companies registered with ASIC, and do not retrieve matters related to trade marks, trading names or brands. 754 Based on the findings which I have made about Mr and Mrs Sarkis's knowledge and conduct, and therefore Henley Constructions' knowledge of Henley Arch's existence and use of its registered marks, Mr and Mrs Sarkis and Henley Constructions could not have held a bona fide belief in good faith that the use of the mark "HENLEY CONSTRUCTIONS" in connection with the building of multi-storey apartment complexes in New South Wales at the time of adopting that mark in February 2007, would not give rise to confusion by consumers of building and construction services. 755 In addition, as stated above in the section related to the cross-examination of Mr Sarkis, at [32] of Henley Constructions' Amended Defence states that, "[a]t 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". However, as stated above, particulars "b" and "c" to that plea (referred to in some detail above) lack an adequate evidentiary basis and, as a result, provide no support for the plea at [32] of Henley Constructions' Amended Defence, which is a core component of Henley Constructions' good faith use of own name defence. 756 Moreover, as stated above in the section related to the cross-examination of Mr Sarkis, at [30] of Henley Constructions' Amended Defence states that "[o]n or about 6 December 2006 … Patrick Sarkis chose the name Henley Constructions name being "Henley Constructions Pty Ltd" in good faith". One of the particulars to that plea was that "Mr Sarkis chose the name "Henley Constructions" due to his pre-existing fondness of the male name "Henley" [and] [t]his fondness includes the fact that Mr Sarkis ha[d] mentioned to his wife prior to [6 December 2006] that if they had a son he would like to call him "Henley Joseph Sarkis" …". However, in cross-examination, Mr Sarkis said he did not provide those instructions to his solicitors, and there is no other evidence to support those particulars. In contrast, the evidence of Mr Sarkis's solicitor, Mr Scott, was that Mr Sarkis did provide those instructions. In these circumstances, a core component of the plea at [30] of Henley Constructions' Amended Defence lacked any evidentiary basis. 757 Henley Constructions' reliance on the s 122(1)(a)(i) own name defence fails.

[128]

Application to the facts 766 For the reasons already given earlier in these Reasons for Judgment, I am satisfied that the "HENLEY CONSTRUCTIONS" mark is deceptively similar to, Henley Arch's 2016 registered marks. I am satisfied that Henley Constructions has used the "HENLEY CONSTRUCTIONS" mark in relation to services which are similar to, or the same as, services in respect of which the 2016 registered marks are registered. I am satisfied on the evidence that Henley Constructions continuously used the "HENLEY CONSTRUCTIONS" mark in relation to those services. I am satisfied that Henley Constructions did so before 2 November 2016, being the priority date for Henley Arch's 2016 registered marks. 767 However, I am not satisfied that Henley Constructions used the "HENLEY CONSTRUCTIONS" mark before Henley Arch "first used the trade mark". This is because, if the court, "having regard to the circumstances of a particular case, thinks fit, … the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark": s 7(1), TMA. 768 In this respect, the priority date for the "HENLEY" registered mark is 18 December 2006. Henley Arch has continuously used the "HENLEY" registered mark at least since that date. As I have already stated above, in my view, each of the 2016 registered marks 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. 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. In other words, each of the 2016 registered marks predominantly uses the dominant memorable feature, being the word "Henley" alone, with the addition of a formal, descriptive word. The use of the 2016 registered marks, in my view, constitutes use of "HENLEY" with an addition or alteration that does not substantially affect the identity of the trade mark "HENLEY". In my view, "HENLEY COLLECTION", "HENLEY RESERVE" and "HENLEY ESSENCE" are use of the trade mark, "HENLEY". 769 In these circumstances, I do not accept that Henley Constructions has used the "HENLEY CONSTRUCTIONS" mark before "the registered owner of the registered trade mark … first used the trade mark": TMA, s 124(1)(e). This is because Henley Constructions did not use the "HENLEY CONSTRUCTIONS" mark before the priority date for Henley Arch's "HENLEY" mark and, for the reasons stated above, pursuant to s 7(1) of the TMA, Henley Arch's use of the 2016 registered marks is use of the "HENLEY" registered mark. 770 As a consequence, I am not satisfied that Henley Constructions has established a defence under s 124 of the TMA. 771 However, if I am mistaken in that conclusion, having reviewed the evidence referred to by Henley Arch concerning this aspect of the proceeding, I would hold that, as at 2 November 2016, Henley Constructions had not used the Post-November 2016 Signs.

[129]

Summary of cross-claim 772 Henley Constructions, by its cross-claim, alleges that two of Henley Arch's registered trade marks, the "HENLEY" mark (registration 1152820) and the "HENLEY PROPERTIES" Device Mark (registration 1152810), each registered in respect of building and construction services (in class 37) and architectural, engineering, design, drafting and interior design services (in class 42) (collectively, the relevant services) should be cancelled or amended. 773 Section 88(1)(a) of the TMA provides that the Court may cancel a registered trade mark. This, pursuant to s 88(2) of the TMA, may be done based on "any of the grounds on which the registration of the trade mark could have been opposed under this Act". The cross-claim is based on the following four grounds: (1) first, it is said that the "HENLEY" trade mark was, as at the priority date, 18 December 2006, non-distinctive and ought be cancelled pursuant to s 41 and 88 of the TMA; (2) second, it is said that the "HENLEY" trade mark was accepted on the basis of representations that were false in material particulars and ought be cancelled pursuant to s 62(b) and 88(2)(a) of the TMA; (3) third, in the alternative, it is said that the "HENLEY" trade mark has not been used in New South Wales in the non-use period, being 7 October 2015 to 7 October 2018, and ought be subject to a limitation under s 92(4)(b)(i) and/or (ii) and s 102(1)(b) and (2) of the TMA: (a) "Registration does not cover the State of New South Wales"; and (b) at the end of class 37 services specification, the words "none of the above being in relation to multi-dwelling residential apartment buildings" should be added. (4) fourth, it is said that during the non-use period the "HENLEY PROPERTIES" Device Mark: was not used for the services for which it is registered in Australia or, in the alternative, New South Wales, and: (a) ought be wholly removed from the register under s 92(4)(b) and s 101 of the TMA; or (b) in the alternative, ought be subject to a limitation under s 92(4)(b) and s 102 of the TMA which reads: (i) "registration does not cover the State of New South Wales"; and (ii) 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.

[130]

Statutory provisions 774 Section 88(1)(a) of the TMA provides: (1) Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by: (a) cancelling the registration of a trade mark … 775 Sections 88(2)(a) and 88(2)(b) of the TMA provides that: (2) An application may be made on any of the following grounds, and on no other grounds: (a) any of the grounds on which the registration of the trade mark could have been opposed under this Act; (b) an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation; … 776 Section 57 of the TMA provides: The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically. 777 By reason of s 57 of the TMA, a relevant ground is contained in s 41 of the TMA. 778 Section 41 of the TMA as relevantly in force at the priority date of the "HENLEY" mark (namely 18 December 2006) provided that: 41 Trade mark not distinguishing applicant's goods or services (1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant. (2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons. (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons. (4) Then, if the Registrar is still unable to decide the question, the following provisions apply. (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: (a) the Registrar is to consider whether, because of the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances; trade mark does or will distinguish the designated goods or services as being those of the applicant; and (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services - the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services - the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons. (6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply: (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant - the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons; (b) in any other case - the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons. 779 Section 41 of the TMA currently provides: 41 Trade mark not distinguishing applicant's goods or services (1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons. Note: For goods of a person and services of a person see section 6. (2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark. (3) This subsection applies to a trade mark if: (a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and (b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant. (4) This subsection applies to a trade mark if: (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances. … (5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant. 780 I turn to set out Henley Constructions' and Henley Arch's submissions on this aspect of the proceeding.

[131]

Henley Constructions' submissions 781 Henley Constructions submits that Henley Arch's "HENLEY" mark is registered for "building and construction services" in class 37 and "Architectural, engineering, design, drafting and interior design services" in class 42. Henley Constructions submits that it is a plain text word mark with no graphic device elements. 782 Henley Constructions submits that s 41 of the TMA applies as a ground of opposition (and hence cancellation) in one of two scenarios. First, when a trade mark is to no extent inherently adapted to distinguish a trader's goods or services from those of other traders (Non-distinctive Mark). Second, when a trade mark is to some extent, but not sufficiently, inherently adapted to distinguish the trader's goods or services from those of other traders (Insufficiently Distinctive Mark). 783 Henley Constructions submits that the central question the Court must ask is whether the "HENLEY" mark or some mark nearly resembling it (such as "Henley Brook" or "Henley Beach" or "South Henley Beach") is a sign that other traders would want to use with a proper motive for ordinary signification in connection with their own goods or services in a manner which would be likely to infringe a registration granted in respect of the trade mark. Henley Constructions submits that whether or not a mark is likely to be used for such "ordinary signification" is tested by enquiring whether "ordinary persons" in the "target audience" observing the use of the mark in relation to the goods or services in Australia are likely to view it as such, and that it is settled that the relevant mark (such as "HENLEY") can have more than one ordinary signification. 784 Henley Constructions submits that, "Henley Brook", "Henley Beach" or "South Henley Beach" (Henley Suburbs) are names nearly resembling "HENLEY" and therefore relevant to the test of whether "HENLEY" had inherent adaptability to distinguish as at the relevant priority date, 18 December 2006. Henley Constructions submits that the purely descriptive words "Beach" and "Brook" would do nothing to prevent an infringement of "HENLEY" if the registration was permitted to remain on the Register. 785 Henley Constructions submits that "HENLEY" lacks distinctiveness. In this respect, Henley Constructions submits that "HENLEY" is a plain text word mark. Henley Constructions submits that there is nothing inherently distinctive about "HENLEY" in relation to common services, like building and construction. Henley Constructions submits that the surname "HENLEY", or alternatively spelt "HENLY" (as a stand-alone surname or part of a hyphenated surname), belonged to approximately 883 people on the Australian electoral role as at the priority date, 18 December 2006, and it belongs to numerous persons in Australia who have held building licences since before 18 December 2006. Henley Constructions submits that the word "HENLEY" referred to a suburb in the lower North Shore of Sydney, which had a population of 478 people in the 2016 census. Henley Constructions submits that the word "HENLEY" was part of the name of all of the Henley Suburbs. 786 Henley Constructions submits that people with surnames containing or consisting of "HENLEY" or "HENLY" would reasonably want to use "HENLEY" or "HENLY" to describe their services as being provided by them. Henley Constructions submits that, in addition to such people, there are others who would want to use "HENLEY" to describe their services as being provided in the Henley Suburbs or to locations in those suburbs. Henley Constructions submits that it is not merely the commonality of the name but the fact that the services are so common and, as a result, they are likely to be provided in all such suburbs. Henley Constructions submits that the proposition that a trader from the Henley Suburbs would not want to refer to their services as being from, or delivered in, those suburbs is untenable. Henley Constructions submits that such traders "may" want to do so, and that is all that is required for the Court to find that the "HENLEY" mark lacks inherent ability to distinguish. 787 Henley Constructions also submits that "HENLEY" has not acquired distinctiveness. 788 I have set out above s 41(6) of the TMA as it appeared at 18 December 2006. In this respect, Henley Constructions submits that only evidence of use before the relevant priority date, 18 December 2006, will be sufficient to establish "HENLEY" was registrable. Henley Constructions submits that this pre-priority date use of "HENLEY" must be to such an extent and nature that it in fact distinguishes Henley Arch's relevant services from those of other traders. Henley Constructions submits that such use must have been to such an extent that it distinguishes all (not just some) of Henley Arch's relevant services from those of other traders. 789 Henley Constructions submits that the evidence of Henley Arch's pre-priority date use is limited. Henley Constructions submits that much of the evidence Henley Arch has relied upon in relation to the use of "HENLEY" outside Victoria is featured in a secondary manner with other brands (such as Plantation Homes). Henley Constructions submits that Henley Arch's evidence of use is, overwhelmingly, in relation to detached and semi-detached house building services, is to a large extent geographically limited, and evidences very little use in New South Wales. Henley Constructions submits that the relevant services are much broader in scope, and use in relation to a narrow range of services only will not assist Henley Arch in satisfying the former s 41(6) for all such services. 790 Henley Constructions referred to Apple v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511. There, Yates J stated at [232]: My finding that the application for registration of app store for the designated services in class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of app store for the designated services in class 38 or class 42. 791 On this basis, Henley Constructions submits that it is not the duty of the Court to carve out parts of the relevant services for Henley Arch. Henley Constructions submits that it is a matter for Henley Arch to do so and, if the s 41 ground is made out in relation to some of the relevant services, the registration ought be cancelled as a whole. 792 Henley Constructions submits that, if the Court does not find that the "HENLEY" mark is a Non-distinctive Mark, then, in the alternative, Henley Constructions submits it is an Insufficiently Distinctive Mark for the purposes of the former s 41 of the TMA. Henley Constructions submits that, in such a case, the post-priority date evidence of use can be taken into account on the question of whether there is sufficient acquired distinctiveness. However, Henley Constructions submits that Henley Arch's post-priority date evidence of use is still largely confined to single dwelling homes in Victoria, and evidence from investigations conducted in both South Australia and Queensland confirm this lack of geographic spread.

[132]

Henley Arch's submissions 793 As to s 41(3), Henley Arch submits that the area of Henley in Sydney is an area of 0.5 square kilometres and had a population of 402 people over the age of 16 at or around the priority date of 18 December 2006. Henley Arch submits that there is no evidence that the area has ever been an industrial or commercial area, or known as such. 794 Henley Arch submits that, while there are thirteen people in Henley who identify their industry of employment as "construction" at or around the priority date of 18 December 2006, there were only five entities granted a building licence prior to that priority date. Henley Arch submits that there is no evidence that such persons traded from Henley or promoted their business as being from Henley. Henley Arch submits that, in these circumstances, as at the priority date of 18 December 2006 and since, it is unlikely that other traders would want to use "HENLEY" to identify their services as being provided from that area. Henley Arch submits that the Henley area is small and relatively unknown and, as a result, it is unlikely that other traders, as at the priority date of 18 December 2006, would want to use "HENLEY" to identify their services as being provided in that area. Henley Arch submits that there is no evidence as to how much building was occurring at or around the relevant priority date in that area. 795 Henley Arch submits that, in these circumstances, the ordinary signification of "HENLEY" is not of a geographical origin, and certainly not one as a place where the relevant services are provided from or to. Henley Arch submits that the size, nature and population of Henley ensures that there is no real likelihood that another trader would want to use this geographical indicator to describe their services (including building and construction services). Henley Arch submits that there was no renown in the name "Henley" (that was not linked to Henley Arch) like the renown "Colorado" has or had for the outdoors, trekking and the ruggedness that made "Colorado" for backpacks somewhat non-distinctive which was considered by Allsop J (as the Chief Justice then was) in Colorado at [128]. 796 Henley Arch submits that only a small number of persons on the electoral role at the priority date of 18 December 2006 had the surname "Henley". Henley Arch submits that, at least in New South Wales, there is no evidence that any person with the name Henley was a builder as at the relevant priority date and, in respect of the one builder that Henley Constructions identified in Australia with the surname "Henley" at the priority date, there is no evidence that he sought to use his surname as a business or trading name. 797 Henley Arch submits that in all of the circumstances the Court should find that the "HENLEY" mark was inherently adapted to distinguish the relevant services as at the relevant priority date. 798 As to s 41(5), Henley Arch submits that, if the Court were to form the view that the "HENLEY" mark was not inherently adapted to distinguish the relevant services, it should be accepted that it was to a large extent inherently adapted to distinguish Henley Arch's services. 799 Henley Arch submits that, as at the priority date of 18 December 2006, the Henley Properties Group had extensively used "HENLEY" simpliciter (including in the domain name www.henley.com.au), "Henley Properties" or "Henley" in various devices in promoting the relevant services for over 15 years. Henley Arch submits that the graphic elements of its relevant devices do not substantially affect the identity of the "HENLEY" mark given that consumers would identify services sold under those devices by reference to the word "HENLEY". Henley Arch submits that this is particularly so given the graphic element is a simple structure which is likely to be the result of building and construction services. 800 Henley Arch submits that the distinction Henley Constructions seeks to make with respect to services in relation to "detached home building services" and other types of buildings is inapt. 801 As to the former s 41(6), Henley Arch submits that, if the Court finds, contrary to Henley Arch's submissions, that the mark was not to any extent capable of distinguishing Henley Arch's services, Henley Arch submits that it extensively used the mark in respect of the relevant services prior to the priority date of 18 December 2006. Henley Arch submits that, as a result, the Court should find that the mark had, in fact, become distinctive of the relevant services and registrable pursuant to s 41(6) as at the priority date. Henley Arch submits that the evidence amply shows that the "HENLEY" mark has been used for "building and construction services" as that expression is ordinarily understood. 802 As to s 88(1), Henley Arch submits that, if, contrary to Henley Arch's submissions, the Court finds that the mark should have been refused pursuant to s 41 on the basis, as Henley Constructions asserts, that the "HENLEY" mark was not used for all of the relevant services (or not used sufficiently as at the relevant priority date), Henley Arch contends that the discretion to not cancel the mark should be applied in its favour. Henley Arch says that this discretion should be applied to all the relevant services so as to avoid fragmentation of ownership of the mark for such services, and the potential for confusion that would arise from such fragmented ownership.

[133]

Consideration - principles 803 Sections 88(1)(a) and 88(2)(a) provide that the court may cancel a registered mark on any of the grounds on which the registration of the trade mark could have been opposed. The validity of the mark is tested as at the date the impugned registration was applied for. One such ground is that the mark did not comply with s 41 of the TMA as in force at 18 December 2006 (which is extracted above). 804 In Accor, the Full Court stated at [236]: On the question of whether a trade mark (relevantly here, a word or words) is capable of distinguishing an applicant's services in respect of which the mark is registered from the goods or services of other persons, we apply the following principles: (1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3). (2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks ("Clark Equipment") (1964) 111 CLR 511 per Kitto J at 514. (3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514. (4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will "rarely eclipse" their "primary" (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, "in [their] own nature", adapted to distinguish the applicant's goods. Traders may legitimately want to use such words in connection with their goods or services "because of the reference they are 'inherently adapted to make' to those goods": Cantarella Bros Pty Limited v Modena Trading Pty Limited ("Cantarella") (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ. (5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57]. (6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the "possible impairment" of the rights of "honest traders" and from the "point of view of the public": Cantarella at [59]. (7) In determining whether a word contains (or words contain) a "direct reference" to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a "covert and skilful allusion" to the relevant goods or services (and thus prima facie registrable as a trade mark), the "ordinary signification" of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59]. (8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the "legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods": Cantarella at [59]. (9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are "allusive or metaphorical": Cantarella at [59]. (10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of "any person in Australia concerned with the goods or services to which the trade mark is to be applied": Cantarella at [70]. (11) Consideration of the "ordinary signification" of any word or words said to constitute a trade mark is "crucial": Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71]. (12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the "ordinary signification" of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71]. 805 In the case of geographical names, the focus of the Court has been on whether the name has a geographical signification. For example, in Colorado at [127]-[128], Allsop J (as the Chief Justice then was), when considering whether the sign "COLORADO" was inherently adapted to distinguish backpacks and the like, was influenced by the evidence which showed the renown of the State of Colorado in the United States of America for its rugged outdoors. 806 In light of s 33 of the TMA (in force at the relevant time), the Court indicated that "the mark is presumed to be sufficiently adapted unless the Registrar is not so satisfied on the balance of probabilities": Sports Warehouse at [28]. 807 In Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; 261 FCR 301, Perram J stated at [125]: … it is not just the desire of traders to use the word which is relevant; it is also their potential desire to use words nearly resembling that word. So here one must examine not just the inherent adaptability to distinguish the Respondent's goods of MOROCCANOIL but also of MOROCCAN OIL, MOROCCAN-OIL and perhaps, without deciding, OIL OF MOROCCO. The necessity so to reason was referred to by Kitto J in Clark (at 513) and reflects the reality that once registration of a mark is achieved, it will be infringed not only by persons using it without its owner's permission but also by those using 'a sign that is substantially identical with, or deceptively similar to, the trade mark': s 120(1) of the Act. Furthermore, account must be taken of the fact that no attempt has been made in this case to limit the mark by stylistic or device elements; it is purely a word. As Yates J explained in Apple at 517 [18] that matters because it means that if the word proceeds to registration it will give the Respondent a monopoly on the use of the word (or words) in whatever form they may be ultimately rendered.

[134]

Consideration - application to facts 808 In respect of this aspect of the proceeding, the "HENLEY" mark is tested as at the date of application of the impugned registration. In this case, the priority date for the "HENLEY" mark is 18 December 2006. I have set out above the relevant statutory provisions. 809 Section 41 of the TMA applies as a ground of opposition (and hence cancellation under ss 88(1)(a) and 88(2)(b)) of the TMA in two situations. First, when a trade mark is non-distinctive mark or when it is insufficiently distinctive. The first ground upon which Henley Constructions challenged the registration of Henley Arch's "HENLEY" trade mark, is that this trade mark did not comply with s 41 of the TMA (as set out above). The question here is whether the "HENLEY" trade mark is a sign that other traders would want to use with a proper motive for ordinary signification in connection with their own goods or services in a manner which would be likely to infringe a registration granted in respect of the trade mark. 810 In my view, "HENLEY" is a plain text word mark and there is nothing inherently distinctive about the mark "HENLEY" in relation to common services, like building and construction services. 811 The evidence is that the surname "Henley" or the alternate spelling "Henly" (as a stand-alone surname or part of a hyphenated surname) belonged to approximately 884 people on the Australian Electoral Roll as at the priority date, 18 December 2006. In this respect, Exhibit R26 provided the following data: 812 That evidence was unchallenged and I accept it. 813 The affidavit of Jasmine Bianca Waddell affirmed 9 May 2019 also provided the following data: (1) In New South Wales, an extract of listings of contractor licences includes three listings containing "Henley" in their name, 16 listings located in the suburb of Henley in New South Wales, two listings located in the suburb of Henley Beach in South Australia and 28 listings located on a road or a street containing "Henley" in its name. (2) In Western Australia, an extract of the register of building practitioners includes two listings containing "Henley" in their name (albeit apparently relating to one person), two listings located on a street containing "Henley" and in the suburb of Henley Brook in Western Australia (albeit apparently relating to one person), and 13 listings located in the suburb of Henley Brook in Western Australia (albeit apparently relating to seven individuals). (3) In Queensland, an extract from the register of licensed builders and contractors includes 17 listings containing "Henley" in the licensee's name, although it appears that four of these are for related entities to Henley Arch. Four of the listings are listed as "not active" and the remainder appear to be active. Of the active listings, not including the entities related to Henley Arch, five are listed as "builder" and the remaining four are listed as "Carpentry", "Structural Landscaping" and "Wall and floor tiling". (4) In South Australia, an extract of the relevant licensed builders register indicates that there are 12 results with "Henley" in the licensee name, although six of these list their status as "Licensed" and the remainder are listed as either "Surrendered" or "Cancelled". The extract also indicates that there are three results containing "Henley" in the trading name which list their status as "Licensed". Of these, one is associated with Henley Arch and another is named "Hire a Hubby Henley Beach". (5) In Victoria, a search of the relevant builders licence register indicates that there were two listings including the word "Henley", one of which appears to relate to Henley Arch. 814 That evidence is unchallenged and I accept it. 815 The evidence is that the word "HENLEY" referred to a suburb in the lower north shore of Sydney, New South Wales, which had a population of 478 people in the 2016 Census. The word "HENLEY" was also part of the names of suburbs in South Australia, being Henley Beach and South Henley Beach, and in Western Australia, being Henley Brook. 816 I accept Henley Constructions' submission that people with surnames containing or consisting of Henley or Henly would reasonably want to use the mark "HENLEY" or "Henly" to describe the services which they provide. An example was Steven Henley, who affirmed an affidavit in this proceeding dated 7 May 2019. As I have stated above, Mr Henley holds a current licence to practice as a builder in Queensland and has held this licence since 28 June 2005. Mr Henley has worked as a builder for over 30 years and has worked in his own building businesses. 817 In Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; 354 ALR 353, Burley J stated at [92]-[93]: [In] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 (Clark Equipment)[,] [there was] a celebrated passage from the reasoning of Kitto J at pages 514 - 516, to the following effect: It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Ltd v Registrar of Trade Marks (1954) 71 RPC 150, at p 154. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as "North Pole" in connexion with bananas: A Bailey & Co Ltd v Clark, Son & Morland Ltd (the Glastonbury Case) (1938) AC 557, at p 562; (1938) 55 RPC 253, at p 257 (see also the Livron Case (1937) 54 RPC 327, at p 339), or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. Compare the case of a descriptive word: Dunlop Rubber Co's Application (1942) 59 RPC 134. But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place. A descriptive word is in like case: the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer. This may seem at first blush a paradox, as Lord Simonds and Lord Asquith suggested in the Yorkshire Copper Works Case (1954) 71 RPC 150, at pp 154, 156, but surely not when Lord Parker's exposition of the subject is borne in mind. The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make. The leading authorities on the subject include the Yorkshire Copper Works Case (1954) 71 RPC 150 (the judgment of Lord Evershed in that case when it was in the Court of Appeal (1953) 70 RPC 1 contains a valuable discussion of the topic), the Glastonbury Case (1938) AC 557; (1938) 55 RPC 253 and the Liverpool Electric Cable Co Case (1929) 46 RPC 99. These cases show, as the Registrar said in the Dan River Case (1962) RPC 157, at p 160, in a decision which was endorsed by Lloyd-Jacob J, that there is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of large and important industrial towns or districts, and also of smaller towns or districts if they are a seat of manufacture of the goods for which registration is sought. Accordingly, in a case such as the present, it is necessary to consider the ordinary signification of the words "Bohemia" and "Bohemia Crystal" in the context of the "target audience", being traders and consumers of the relevant goods, to determine whether at the relevant dates other traders might legitimately desire to use these words or something similar in connection with their goods, for the ordinary signification which they possess … (Emphasis added.) 818 The commonality of the goods and services provided is to be considered as well as the commonality of the name. In the present case, building and construction services are, in my view, common services which will be found to be offered in most geographical locations throughout suburban Australia. 819 I accept Henley Constructions' submissions that persons who provide services to or from the Henley Suburbs may legitimately seek to use such names in connection with the provision of building and construction services. 820 I accept the evidence of Ms Waddell that, in New South Wales, there are three licensed contractors licences containing "Henley" in their name, 16 listings located in the suburb of Henley in New South Wales, two listings located in the suburb of Henley Beach in South Australia, and 28 listings located on a road or a street containing "Henley" in its name. I accept Ms Waddell's evidence that a number of these licenses were issued prior to December 2006. 821 I accept that these traders or contractors may reasonably want to use "HENLEY" to describe their building and construction services from the suburb of Henley in New South Wales or being provided in or to locations in the suburb of Henley, New South Wales. It is to be observed that the authorities identify examples where courts have found even foreign and historical case names to be non-distinctive marks. For example, these include: (1) "COLORADO" for back packs: Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; 164 FCR 506 at [128]. There, Allsop J (as the Chief Justice then was) stated: [The appellants] tended to brush away the importance of the geographical indicator by saying that the State of Colorado was not recognised as a place with any reputation for shoes, clothes, bags or wallets. This approach of the appellants rather ignores the possible relationship between backpacks and mountains and trekking - Colorado backpacks, for instance, is a possible signification of backpacks from that State or backpacks that might conjure the images redolent of that State … I have difficulty in accepting that the word "Colorado" is inherently adapted to distinguish backpacks, or even bags, wallets and purses. It is not a fancy or made up word. It is the use of a name being a State of the United States of America which has well-known mountains and is a rugged holiday area. In my view, the honest trader could well wish to make use of the signification of the word for geographic reasons - especially in relation to backpacks, or to raise a connotation from the geographic attributes of that State. In my view, the primary judge was wrong to conclude that the word was inherently adapted to distinguish. (2) "OREGON" (with oval device) for saw machines and parts: Blount Inc v Registrar of Trade Marks [1998] FCA 440; 83 FCR 50. (3) "PERSIAN FETA" for dairy products, including cheese: Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd and Anor [2010] FCA 1367; 191 FCR 297. There, Middleton J stated at [217]-[218]: As I have indicated, I accept then that other cheese makers in Iran, Australia, or elsewhere, trading or wishing to trade in Australia, may want to use the word "Persia" or "Persian", on or in connection with fetta, either to signify the style of cheese or to indicate that their cheese comes from the region formerly known as Persia. These traders would have a legitimate interest in using both the geographical and style name to identify their goods. I am also satisfied that there is a likelihood of other traders legitimately wishing to use in Australia the phrase "Persian Fetta" in relation to cheese products in the appropriate circumstance. It follows that PERSIAN FETTA was not inherently adapted to distinguish Yarra Valley's cheese, and s 41(6) TMA applies in the present case … (4) "MICHIGAN" for earth-moving and like equipment: Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511. (5) "OXFORD" for printed publications: Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1; 94 ALR 269; 17 IPR 509. 822 Consistent with the statement of principle in Cantarella at [57]-[59] and Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at pp 514 -515, a suburb-named trade mark is likely to be needed and used by traders without improper motive for the ordinary signification of their goods and services if the registration sought is in relation to common goods or services of the kind provided in suburbs. Building and construction services and architectural, engineering, design, drafting and interior design services as at the priority date, 18 December 2006, are services of a kind which are commonly found in suburbs throughout Australia being delivered by multiple providers. I find, on the evidence, that the name "HENLEY" when used in relation to building and construction services and architectural and design services is a descriptive geographical name that the Full Court in Accor at [236(4)] expressed as being: … not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will "rarely eclipse" their "primary" (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, "in [their] own nature", adapted to distinguish the applicant's goods. Traders may legitimately want to use such words in connection with their goods or services "because of the reference they are 'inherently adapted to make' to those goods" … (Internal quotations in the original; citations omitted.) 823 I find, on the evidence, that between 633 and 11,774 people "may" have wanted to use the word "Henley" or a word nearly resembling it for ordinary signification in relation to their own services as at the priority date, 18 December 2006. The evidence is that: (1) 883 persons appearing on the Electoral Roll as at 31 January 2016 had the surname "Henley", or "Henley-[another name]"; (2) 478 people resided in the suburb of Henley as at 31 January 2016; (3) 5,405 people resided in the suburb of Henley Beach on 31 January 2016; (4) 2,289 people resided in the suburb of Henley Beach South as at 31 January 2016; (5) 2,719 people resided in the suburb of Henley Brook as at 31 January 2016; (6) in the suburb of Henley, New South Wales, there were three builders with building contracting licences as at 18 December 2006 and a further four builders after that date; (7) in the suburb of Henley Brook, seven builders had building licences as at 18 December 2006 and a further two builders acquired licences after that date; (8) one builder in the State of Western Australia obtained a building licence under the surname "Henley" after 18 December 2006; (9) five builders with the surname "Henley" had held at some point in time a building licence in the State of Queensland; (10) six builders with a surname "Henley" have held at some point in time a building licence in the State of South Australia; (11) 121 builders have held a building licence in Henley Beach, South Australia; and (12) 18 builders, who have held a building licence at some point in time, have traded in Henley Beach South, South Australia. 824 I am satisfied on the evidence that "HENLEY", without more, is a non-distinctive mark. 825 Notwithstanding that I have found that "HENLEY" was not, without more, inherently adapted to distinguish, the mark may still be registerable if the trade mark owner, Henley Arch, establishes that it is capable of distinguishing the designated services (s 41(5) of the TMA as at 18 December 2006), or in fact distinguishes the designated services (s 41(6) of the TMA as at 18 December 2006) as at the priority date, 18 December 2006. 826 I accept that the evidence establishes that, as at the priority date, Henley Arch had extensively used "HENLEY" simpliciter including in the domain name henley.com.au, "Henley Properties" or "Henley" as part of a simple device, the Initial Henley Devices and the 2005 Henley Devices in the promotion of its building and construction services for more than 15 years. In addition, I have already set out, in relation to the ACL claim, a good deal of evidence concerning Henley Arch's use of "HENLEY", and its consequent reputation. That evidence reinforces the conclusion that as at the priority date, Henley Arch had extensively used "HENLEY" simpliciter. 827 I find that each of these uses was use of the mark "HENLEY" alone or with additions or alterations that did not substantially affect its identity as provided for in s 7(1) of the TMA. I accept Henley Arch's submission that the breadth of elements of the Initial Henley Devices and the 2005 Henley Devices do not substantially affect the identity of the "HENLEY" mark given that consumers would identify services sold under those devices by reference to the word "HENLEY". 828 In these circumstances, I find on the evidence that, as at the priority date of 18 December 2006, the "HENLEY" mark had the capacity to distinguish the building and construction services provided by Henley Arch. It follows that I am satisfied on the evidence that the requirements of s 41(5) of the TMA as at 18 December 2006 have been satisfied and that the "HENLEY" mark has acquired distinctiveness as at the priority date of the building and construction services provided by Henley Arch. 829 For the reasons given, I also find, on the evidence that, as at the priority date of 18 December 2006, the "HENLEY" mark had in fact become distinctive of the building and construction services provided by Henley Arch "in the sense that the mark distinguishes the registered proprietor's goods from others of the same type in that market": Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 402;30 FCR 326 at [52] cited in Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174; 260 FCR 359 at [357]. It follows that I am satisfied, on the evidence, that the requirements of s 41(6) of the TMA have been met. 830 In light of the findings that I have made in respect of ss 41(5) and 41(6) of the TMA, it is unnecessary for me to consider whether to exercise the discretion conferred by s 88(1) of the TMA. 831 For the reasons given, Henley Constructions has not established that the "HENLEY" trade mark was, as at the priority date, 18 December 2006, non-distinctive and ought be cancelled under ss 41 and 88 of the TMA.

[143]

Henley Arch's submissions 851 Henley Arch submits that the Armstrong Declaration and Henley Arch's submissions with respect to the distinctiveness objection under s 41, which were provided to the examiner, were supported by documentary evidence, meaning that the examiner cannot be assumed to have referred solely to the impugned statements. 852 As to the first impugned representation, Henley Arch submits that the statement "across Australia" does not represent that the relevant services had been provided in, or in relation to property located in, all eight States and Territories of Australia or at least the majority of the States and Territories (or that the evidence in the Armstrong Declaration was as such). Henley Arch submits that, in fact, Henley Arch had provided the relevant services to people in at least the majority of States and Territories of Australia. Henley Arch submits that, to the extent that the first impugned representation was made, Henley Arch says it was not false. 853 As to the second impugned representations, Henley Arch submits that the alleged representations are not conveyed by the second impugned statement. Henley Arch submits that, in fact, the statement as to the proposed extension of use is clearly specified. Henley Arch submits that, to the extent the second impugned representations were conveyed, Mr Harvey's evidence was that this statement in the Armstrong Declaration was consistent with his recollection of the Henley Properties Group's intention for its future use of the "Henley" brands as at 2008 and at that time there was no intention to geographically limit the use of "Henley" in Australia. 854 As to the third impugned representations, Henley Arch submits that the alleged third impugned representations were not conveyed and, in particular, the statement does not contain an express statement that the display homes in Queensland and South Australia were "Henley" branded display homes or that the "HENLEY" trade mark was advertised on physical signage in such display villages. Henley Arch submits that, to the extent that the third impugned representations were conveyed, they were not false. Henley Arch submits that, in particular, Henley Arch operated display homes in South Australia under the primary brand "Henley", and in Queensland under the primary brand "Plantation Homes" used in conjunction with the name "Henley" and devices including "HENLEY". 855 As to the fourth impugned representations, Henley Arch submits that those alleged representations were not conveyed by the relevant statement and, in particular, the statement clearly states that the amount stated is an approximation of the amount spent on advertising and promotion of the relevant services in 2007-2008. Henley Arch submits that, to the extent that the fourth impugned representations were conveyed, they were not false in a manner which would materially affect the decision of the examiner. Henley Arch submits that, on the evidence, the Henley Properties Group spent approximately $5.395m on advertising across Victoria, New South Wales, South Australia and Queensland in the financial year ending 30 June 2008. Henley Arch submits that, on the evidence, the total for Victoria, New South Wales and South Australia where "HENLEY" was used as the primary brand, was approximately $4.326 million, which is approximately 80% of the aforementioned total. 856 Henley Arch submits that, in any event, if the examiner had considered s 41 to be in issue, Henley Arch would have submitted further evidence, as discussed above, to address that concern and it would have been resolved in Henley Arch's favour. Henley Arch referred to its submissions on distinctiveness in this regard.

[146]

HENLEY 860 Henley Constructions submits that, pursuant to s 102 of the TMA, it is entitled to register the "HENLEY CONSTRUCTIONS" mark, geographically limited to New South Wales. 861 Henley Constructions submits that Henley Arch has not adduced any evidence of use by Henley Arch (as the registered owner) of the "HENLEY" trade mark in relation to any services provided in New South Wales from 7 October 2015 to 7 October 2018 (Non-Use Period). 862 Henley Constructions submits that, if using a mark (or displaying a mark) on a website is to be regarded as "use in the course of trade" in New South Wales, such use must target consumers located in that State. Henley Constructions submits that Henley Arch has not produced evidence that it has targeted consumers in New South Wales, and nor can it be inferred from the website that consumers in New South Wales were being targeted. 863 Henley Constructions submits that any use of the "HENLEY" trade mark is not use by the registered owner, Henley Arch, in New South Wales. Henley Constructions submits that Henley Arch should be prevented from asserting that it is the authorised user of the trade mark pursuant to ss 7(3) and 8 of the TMA, because, in Henley Constructions' submission, Henley Arch has not adduced any evidence that such authorised use was under the control of Henley Arch. 864 Henley Constructions submits that, if the "HENLEY" trade mark is found to be valid, then, in the alternative, its registration ought be amended to include the following limitation: "Registration does not cover the State of New South Wales". 865 Henley Constructions also submits that, if the "HENLEY" trade mark is found to be valid, then there is a second limitation to registration which ought be imposed. In its Second Further Amended Statement of Cross-claim, Henley Constructions has sought the following second limitation to the "HENLEY" trade mark by way of partial removal: "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". Henley Constructions submits that this limitation is based on the fact that the "HENLEY" trade mark has not been used at all for the service sought to be removed. Henley Constructions submits that Henley Arch has provided no evidence of it using the "HENLEY" trade mark in relation to building and construction services for multi-dwelling residential apartment buildings. Henley Constructions submits that building and construction services in relation to such buildings are distinct in the market, in the materials required, in the trade channels utilised and have common service providers. Henley Constructions submits that Mr Harvey accepted in cross-examination that Henley Arch does not intend to use the "HENLEY" trade mark in relation to high rise apartments. Henley Constructions submits that Henley Arch has not used the "HENLEY" trade mark in relation to multi-dwelling residential apartment buildings and, as a result, it is in the public interest that such services be removed from the registration. Henley Constructions submits that there is a public interest against maintaining trade mark registrations in respect of particular goods or services where there is no intention to use the registered marks for such goods or services.

[147]

HENLEY PROPERTIES Device Mark 866 Henley Constructions submits that its non-use application under s 92(4)(b) to remove the "HENLEY PROPERTIES" Device Mark seeks: (a) removal of the trade mark under s 101 of the TMA; or (b) a the trade mark be subject to limitation under s 102 of the TMA which will read: "Registration does not cover the State of New South Wales" and 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. 867 Henley Constructions submits that the removal of trade mark under s 101 of the TMA requires there to be no evidence that Henley Arch has used the "HENLEY PROPERTIES" Device Mark in the Non-Use Period, so long as there are no other circumstances which make it reasonable for the Court to refuse removal under s 101(3) of the TMA. Henley Constructions submits that the application can be said to be one of "reverse onus" in that it is Henley Arch that carries the burden of proof. 868 Henley Constructions submits that the mere display of a trade mark is not sufficient evidence to prove "use" of a trade mark, rather the requisite "use" that must be established is use "as a trade mark", and that requires use as a "badge of origin" in the course of trade. 869 Henley Constructions submits that Henley Arch has failed to provide evidence of any such trade mark use of the "HENLEY PROPERTIES" Device Mark during the Non-Use Period in Australia. Henley Constructions submits that Henley Arch has failed to show any use that can be said to be attributable to it as the registered owner of the trade mark during the Non-Use Period. 870 Henley Constructions contends that Henley Arch has only provided evidence of the following trade mark, which it claims is sufficient to establish use of the "HENLEY PROPERTIES" Device Trade Mark: (New HENLEY Logo). 871 Henley Constructions submits that merely displaying the New Henley Logo on its website (located at www.henley.com.au) is not on its own sufficient to establish good faith use of the mark throughout Australia. Henley Constructions submits that Henley Arch has not discharged its relevant onus for the following reasons. 872 Henley Constructions submits that there is no provision in the TMA which provides that the use of a "similar" trade mark is able to amount to evidence of use for another registered trade mark (i.e. that evidence of the use of the New Henley Logo will not be sufficient to prove use of the "HENLEY PROPERTIES" Device Mark). Henley Constructions submits that the only way evidence of use of a mark that differs from the registered mark can be treated as use of a registered mark itself is if that different mark differs only in additions or alterations "that do not substantially affect the identity" of the registered mark: TMA, ss 7(1) and 100(3)(a). 873 Henley Constructions submits that the Court must assess whether the "HENLEY PROPERTIES" Device Mark has been used, as a trade mark, with only additions or alterations that do not substantially affect its identity, when standing in the shoes of a person looking at the New HENLEY Logo. Henley Constructions submits that such an assessment must consider the purpose and nature of the marks: Anheuser-Busch at [186]. Henley Constructions submits that the question that should be asked when viewing these two marks is: "should these marks be considered as one and the same?". 874 Henley Constructions submits that, if a logo consists of a non-distinctive word, then other graphic features in the mark are likely to gain more significance to the consumer and should not be dismissed as mere "window-dressing": Bavaria NV v Bayerischer Brauerbund EV [2009] FCA 428; 177 FCR 300, per Bennett J at [73]. 875 Henley Constructions submits that the New HENLEY Logo differs from the "HENLEY PROPERTIES" Device Mark in the following ways. First, the "PROPERTIES" element in a large rectangular bar is absent. Second, a curve device has been added under the triangle device. Third, the thin font in which "HENLEY" is displayed has changed in style and sizing. 876 Henley Constructions submits that, given "HENLEY" is non-distinctive, consumers will be drawn to the graphic elements and it cannot be said that changing such elements does not substantially affect the identity of the mark. 877 Henley Constructions submits that the degree to which consumers are drawn to such changes need not be overwhelming for identity to be substantially affected. In Henley Constructions' submission, a change that substantially affects the identity of the mark is any change whatsoever in the features of the mark, which consumers will see as functioning to distinguish Henley Arch's services from those of other traders. Henley Constructions submits that it need not be a change to the most dominant element, or the word element in a logo. 878 Henley Constructions submits that, in Re British Hoist & Crane Coy Ltd's Trade Mark (1955) 72 RPC 66 (Re British Hoist), Lloyd-Jacob J held that a change to the following logo which merely substituted the geographic term "SLOUGH" with "COMPTON" substantially affected its identity: 879 Henley Constructions submits that, in determining the issue, Lloyd-Jacob J agreed with the lower decision of the Registrar (UK), which included the following passage: I do not think that Sec. 35(1), when it provides for the alternation of a trade mark "in a manner not substantially affecting the identity thereof", is intended to be interpreted as meaning that if a proposed alternation is quantitatively of a minor character, i.e. minor as regards its physical relation to the mark as a whole, the alteration should be necessarily held admissible. It seems to me that the intention of the subsection is to provide for an alteration which does not in substance affect the identity of a mark, and that by "identity" is meant the feature or features by which the mark will be recognised in its function of distinguishing the proprietors' goods from the similar goods of other traders. In the present instance the proprietors are seeking to introduce into their mark an entirely new factor, viz. a common surname, and I consider that for the reasons given above such an alteration must inevitably result in a change in substance of the identity of the mark. 880 Henley Constructions submits that this statement accurately describes how "not substantially affect the identity" ought be interpreted in s 7(1) of the TMA. 881 Henley Constructions also submits that the possible adverse effects on the rights of third parties in interpreting these words too liberally ought be taken into account by the Court. Henley Constructions submits that other traders may be unreasonably restricted from registering and using device trade marks with a similar distinctive layout of a triangle device positioned above a box device with the word "PROPERTIES" contained therein when registration for the mark containing those elements ought have been removed. 882 Henley Constructions submits that Re British Hoist makes clear that such provisions concerning alterations do not exist to allow leeway for alleged "minor" changes in the trade mark. Rather, they are to set the boundaries of ownership and the monopoly rights granted by registration. Henley Constructions submits that, in keeping with such an aim, the deletion of an entire word in a box device accompanied by other graphic changes must be seen as substantially affecting the identity of the registered trade mark. Henley Constructions submits that the overall graphic layout of the "HENLEY PROPERTIES" Device Mark is distinctive, and the New HENLEY Logo alters the overall distinctive graphic layout.

[151]

HENLEY mark - geographic limitation 887 Henley Arch submits that a precondition which Henley Constructions must meet before s 102 could apply is that pleaded in [30] of the Second Further Amended Statement of Cross-Claim, namely that: Henley Constructions is entitled to registration for the trade mark HENLEY CONSTRUCTIONS in relation to the [relevant services] (or in the alternative "Class 37: Building and construction services in relation to multi-dwelling residential appartments [sic]") subject to the limitation that such registration shall cover the State of New South Wales only. 888 Henley Arch submits that Henley Constructions would not be entitled to register "HENLEY CONSTRUCTIONS" because Henley Arch has a well established reputation under the Henley trade marks, and has had this reputation at all relevant times. 889 Henley Arch submits that, assuming Henley Constructions overcomes that purported difficulty, Henley Arch used the "HENLEY" trade mark in respect of the relevant services during the Non-Use Period in Australia. 890 In this respect, Henley Arch submits that, in particular, in New South Wales, Henley Arch promoted its services for detached houses and townhouses, including to New South Wales residents, under the "HENLEY" trade mark from the website at henley.com.au and readybuilt.com.au. Henley Arch submits that this use has included: (1) "HENLEY" in the domain name "henley.com.au" as a website address; (2) the Henley website during the Non-Use Period shows use of "Henley", "Henley Properties", the 2005 Henley Devices and the 2017 Devices; (3) the readybuilt.com.au website during the Non-Use Period shows use of "Henley", the 2005 Henley Devices, "by Henley", and the 2017 Devices. 891 Henley Arch submits that in New South Wales it has promoted its building and construction services under "Henley", the 2017 Devices and "Henley Properties" for new homes and townhouses at its LinkedIn Page, YouTube Channel, its Instagram account and Vimeo. 892 Henley Arch submits that in New South Wales in 2016 and 2017, there were 33,182 and 26,082 visits from people located in New South Wales to the www.henley.com.au website (respectively) and the numbers were similar in the 2015 and 2018 years. Henley Arch submits that the Court should be satisfied that the promotion of Henley Arch's services under the "HENLEY" mark reached at least over 60,000 people based in New South Wales. 893 Henley Arch submits that it provided its services to residents of New South Wales in New South Wales, and Henley Arch built 41 houses for customers in New South Wales, which included use of the 2005 Henley Devices and the 2017 Henley Devices. Henley Arch submits that this included use of (a) the 2005 Henley Devices; (b) "by Henley"; and (c) the 2017 Devices, on new home contracts with customers in New South Wales. 894 Henley Arch submits that, if the Court finds that Henley Constructions has satisfied each of the requirements of s 102 of the TMA, the Court should decline to exercise its discretion to impose a geographical limitation on the use of the "HENLEY" trade mark. 895 Henley Arch submits that it has historically used the name "Henley" in New South Wales, and there is a residual reputation associated with this historic use. Henley Arch submits that it has continued to promote its construction services in Victoria to New South Wales residents by, at least, its website and the dealings with those customers. Henley Arch submits that these matters provide a sound basis for the application of the discretion in Henley Arch's favour. 896 Henley Arch submits that a relevant factor is that Henley Arch has continued to promote its building and construction services in respect of detached dwellings and townhouses, including to people in New South Wales. Henley Arch submits that such promotion has been received by people in New South Wales in that in 2019 and 2020 there were over 850,000 visits from people in Australia to www.henley.com.au and, of these, over 20,000 were from people in New South Wales. 897 Henley Arch submits that the free and unfettered movement across Australia weighs strongly against removal of the mark for a particular geography. 898 Henley Arch submits that, on the evidence, there is a national market for building and construction services, especially amongst suppliers of and to the industry, and investors in the products of the industry. Henley Arch submits that this is a factor which weighs against removal of the mark for a particular geography.

[153]

HENLEY PROPERTIES Device Mark 902 In relation to the "HENLEY PROPERTIES" Device Mark, Henley Arch contends that its use during the Non-Use Period of at least the 2005 Henley Devices should be considered use of the "HENLEY PROPERTIES" Device Mark. Henley Arch submits that both the "HENLEY PROPERTIES" Device Mark and each of the 2005 Henley Devices consist of a triangular device (reminiscent of a house) and "Henley" in lower case font, and the "HENLEY PROPERTIES" Device Mark also includes the word "properties" in significantly smaller font. Henley Arch submits that, given the relative size of "PROPERTIES" and the descriptive nature of the word "properties", it does not substantially affect the identity of the mark because consumers would identify products sold under those devices by reference to the word "HENLEY". 903 Henley Arch submits that the use of the 2005 Henley Devices has been in Australia generally and in New South Wales, including relevantly during the Non-Use Period, on the website www.henley.com.au in respect of the relevant services and in particular in New South Wales. Henley Arch submits that it promoted its building and construction services of detached homes and townhouses under, and by reference to, the 2005 Henley Devices, including to New South Wales residents, from the website at www.henley.com.au. Henley Arch refers to the fact that, in 2016, there were 33,182 visits from people located in New South Wales to the www.henley.com.au website. Henley Arch referred to the Henley website during the Non-Use Period showing the use of the 2005 Henley Devices, and the www.readybuilt.com.au website during the Non-Use Period showing use of the 2005 Henley Devices. Henley Arch also submits that it provided its building and construction services of detached homes and townhouses under, and by reference to, the 2005 Henley Devices, including to residents of New South Wales. 904 Henley Arch also submits that Henley Constructions' non-use application in respect of "building and construction services in relation to multi-dwelling residential apartments" is not an application that is open to be made under s 92(2) because it seeks to draw too fine a distinction, inappropriately erodes the rights of registration and is apt to cause confusion by fragmentation of the mark. 905 Henley Arch submits that, if the Court finds that there has been no good faith use of the "HENLEY PROPERTIES" Device Mark at all or in respect of "multi-dwelling apartment buildings", the Court should exercise its discretion in s 101(3) in favour of retaining the mark on the register (without the limitations proposed by Henley Constructions). 906 Henley Arch submits that, in accordance with s 101(4), the Court should accept that building and construction services of "multi-dwelling apartment buildings" (the "Narrow Services") are "similar services" to building and construction services in respect of houses (including townhouses/terraces) for which Henley Arch submits it has clearly used the mark extensively during the Non-Use Period. Henley Arch submits that, on this basis alone, the discretion weighs heavily in favour of not limiting the mark by excluding the Narrow Services. 907 Henley Arch submits that a limitation to the scope of registered services would not ameliorate the likelihood of a number of people in Australia (including in New South Wales) being deceived or confused, but would in fact create fragmented ownership of a mark that consumers would rightly expect to be owned by one entity. 908 Henley Arch also referred to the following factors. Henley Arch submits that there has been extensive use by Henley Arch prior to, during and since the Non-Use Period of the name "Henley" and devices including the trade mark "HENLEY". Henley Arch submits that there is a high potential for confusion if the mark is removed from the register by reason of other traders using "Henley" or a related name in respect of apartments. Henley Arch submits that the building and construction of houses and townhouses and terraces are services of the same description as building and construction of multi-dwelling residential apartments buildings. Henley Arch referred to its other various submissions and evidence in this respect. Henley Arch submits that Henley Constructions' submissions are an unwarranted division of the building and construction market into categories that consumers will not properly understand. Henley Arch also referred to its intention, and actions taken, to use the HENLEY mark in respect of apartment buildings, as disclosed in Mr Harvey's evidence. Henley Arch submits that, to the extent Henley Constructions will suffer any prejudice in having to cease using its mark, that has been brought about by its own conduct in its "ramping up" in usage after being put on notice by Henley Arch's letter of demand on 13 April 2017.

[155]

Alleged non-use 912 A "person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register": s 92(1), TMA. An "application may not be made to the Registrar under s 92(1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register": s 92(3), TMA. An application under s 92(1) or s 92(3) is referred to as a "non-use application": s 92(4), TMA. Section 92(4) of the TMA provides: (4) [A non-use application] may be made on either or both of the following grounds, and on no other grounds: (a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith: (i) to use the trade mark in Australia; or (ii) to authorise the use of the trade mark in Australia; or (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods and/or services to which the non‑use application relates and that the registered owner: (iv) has not used the trade mark in Australia; or (v) has not used the trade mark in good faith in Australia; in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed; (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner: (i) used the trade mark in Australia; or (ii) used the trade mark in good faith in Australia; in relation to the goods and/or services to which the application relates. 913 In any "proceedings relating to an opposed [non-use] application, it is for the opponent to rebut … any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the [Non-Use Period], been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services": s 100(1)(c), TMA. That is, it is for Henley Arch to rebut Henley Constructions' allegation that "HENLEY" has not, at any time during the Non-Use Period, been used, or been used in good faith, by Henley Arch in relation to the relevant goods and/or services. Section 100(3) provides: (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if: (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or (b) in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register: (i) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and (ii) the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period. 914 If "at the end of the proceedings relating to an opposed [non-use] application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates": s 101(2), TMA. 915 As to use of a trade mark, in E & J Gallo, French CJ, Gummow, Crennan and Bell JJ stated at [44] that "[a] mark is used only if it is used "in the course of trade"." Their Honours also stated at [64]: Whilst a single act of sale may not be sufficient to prevent removal, in the case of genuine use, a relatively small amount of use may be sufficient to constitute "ordinary and genuine" use judged by commercial standards. (Citations omitted; emphasis added.) 916 In Flexopack, Beach J stated at [57] and [64]-[66]: There can be little doubt that the First Respondent is and has been using the words "Flexopack Australia", or "Flexopack" as it occasionally appeared, as a trade mark in relation to the multilaminate film products that it has sold and offered for sale. It has not used any other designation that has performed the function of a badge of origin. Further, I am not in doubt that the domain name www.flexopack.com.au is and has been used as a trade mark … The domain name www.flexopack.com.au represents the First Respondent's company name which in turn functions as a trade mark. A customer would not see www.flexopack.com.au as being merely descriptive. It is used to identify the website which acts as a virtual reality storefront offering the relevant goods for sale. Further, the First Respondent also presents the domain name on company material. This presentation is clearly to direct customers to the website through the identifier Flexopack albeit with "www." and ".com.au" elements. Further, the presentation of www.flexopack.com.au on invoices is a contraction of "Flexopack Australia". This reinforces its indication of origin. It is used as a badge of origin to attract customers to the website featuring those goods. Further, the First Respondent also uses email addresses associated with the domain name including info@flexopack.com.au and george@flexopack.com.au. These are used to engage in transactions relating to the goods and also indicate origin. 917 Having regard to those principles, in my view, Henley Arch has proven on the balance of probabilities, that the "HENLEY" mark was used in good faith by Henley Arch in relation to the relevant services during the Non-Use Period. This is so for the following reasons. 918 First, for the reasons stated above, in my view, Henley Arch's use of "Henley Properties", the website: henley.com.au, the 2005 Henley Devices and the 2017 Devices are each uses of the "HENLEY" mark with additions that do not substantially affect the identity of the "HENLEY" mark. In relation to "Henley Properties", "properties" is entirely descriptive. The addition of that word does not substantially affect the identity of the "HENLEY" mark. The graphic elements of the 2005 Henley Devices and the 2017 Devices do not substantially affect the identity of the "HENLEY" mark given that consumers would identify products sold under those devices by reference to the word "HENLEY". This is particularly the case when the graphic element is a simple structure which is likely to be the result of building and construction services. 919 Second, Henley Arch promoted its services for detached houses and townhouses, including to New South Wales residents, under the "HENLEY" mark from the website at henley.com.au. The Henley website, during the Non-Use Period, shows use of "Henley", "Henley Properties", the 2005 Henley Devices and the 2017 Devices. The following is an extract of the website www.henley.com.au as at 21 November 2016: 920 Third, the evidence shows that, in 2016 and 2017, there were 33,182 and 26,082 visits from people located in New South Wales to the henley.com.au website respectively. The numbers were similar in the 2015 and 2018 years. I am satisfied that the promotion of Henley Arch's services under the "HENLEY" mark reached at least over 60,000 people based in New South Wales. That was use of the mark in New South Wales. In my view, and in line with the reasoning of Beach J in Flexopack at [64], the website henley.com.au website acted "as a virtual reality storefront offering the relevant [services] for sale" for consumers located in New South Wales. 921 Fourth, in Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 68; (1994) 120 ALR 495, Gummow J stated at [46]-[47]: [I]t was said that there had been no use by Carnival of its mark in relation to services for the purpose of indicating or so as to indicate a connection in the course of trade between the services and Carnival. This was because whilst services may have been procured by means of contracts negotiated, concluded and paid for as a result of steps taken in Australia, the services in question were supplied and, in terms of the contractual arrangements, could only have been supplied by the provision of sea cruises outside Australia. [I]t has to be remembered that whilst the same may be true of contracts for supply of future or unascertained goods, a service will not exist before its supply. Thus, the use of a trade mark in relation to services may readily be understood as a use in and about the soliciting and conclusion of contracts for the supply thereafter of services. 922 Gummow J continued at [55]: It is appropriate … to consider more closely the nature of the arrangements pursuant to which bookings were made from Australia for Carnival cruises … The effect of the procedures was that the general agent brought about a contract made by it on behalf of its principal, Carnival, with the local agent on behalf of the passengers. The evidence indicates that in many cases, in the interval between the initial inquiry and the conclusion of the contract, there might be a number of communications on such matters as the location of available cabins. Thus, whilst the course of trade involved the provision of the services contracted for by steps taken outside Australia (ie the cruise itself) crucial integers in that course of trade took place in Australia. The trade commenced with the various steps taken to encourage inquiries from prospective customers and advanced with the placing and acceptance of bookings. 923 In this case, Exhibit A23 shows that, in the Non-Use Period, Henley Arch built 41 houses in Victoria for customers located in New South Wales. Having regard to the evidence (see annexure "JH-27" to the First Harvey Affidavit), in constructing these homes for persons located in New South Wales, Henley Arch used the 2005 Henley Devices, "by Henley" and the 2017 Devices on new home contracts with customers in New South Wales. I am also satisfied that, in communications to customers based in New South Wales in relation to the services being provided, Henley Arch uses both the "HENLEY" trade markark (by referring to www.henley.com.au and the tag line "Henley… Building tomorrow's homes today") and used the 2005 Henley Devices: see annexure "JH-57" to the Second Harvey Affidavit. An example of the use in a communication to a customer is the following use in an email to a customer: 924 On the evidence, I am satisfied that the "HENLEY" trade mark was used in good faith by Henley Arch in relation to the relevant services during the Non-Use Period.

[157]

Proposed services limitation 928 I will not order that the "HENLEY" trade mark be subject to the following additional limitation by way of partial removal: at the end of the class 37 services specification, I will not add the words "none of the above being in relation to multi-dwelling residential apartment buildings". I have reached this conclusion for the following reasons. 929 In Tivo Inc v Vivo International Corp Pty Ltd [2012] FCA 252, Dodds-Streeton J stated at [471]-[472]: Prior to the insertion in 2006 of s 101(4) (which expressly permits consideration of the trade mark owner's use of the mark on goods which are similar to those specified in the registration), Drummond J, in McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537, recognised that fragmented ownership of the same or a very similar mark in respect of very similar goods could lead to confusion. Fine distinctions between the goods which should remain or be removed could, in the context of applications for removal for non-use, erode the value of trade mark registration. His Honour stated: [T]here is a real question as to the proper interpretation to be placed on the expression "any or all of the goods … in respect of which the trade mark … is registered" in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents' non-use applications, viz that between armoured military vehicles of greater than eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion. Drummond J's interpretation of s 101 was endorsed by Finn J in CA Henschke & Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63 at [169]. 930 In this case, Mr Harvey's evidence was that 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. Mr Harvey also gave evidence 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. 931 This latter evidence was similar to the evidence of Mr Sarkis. In relation to the materials and work involved in a single detached dwelling versus an apartment building, Mr Sarkis agreed these could be the same (eg, formwork, sheet piling, slab construction, "roughing-in", sound proofing, fire alarms and sprinklers): Transcript, pp 337-338. Mr Sarkis agreed that the amount of work involved and differences in the work between some houses and some apartment buildings might not be great or simply depended ("it depends") on the nature of the site and building: Transcript, p 339. 932 In my view, the evidence of Mr Becerra and Mr Tatian can be fairly characterised as accepting that there is a degree of overlap between the steps required, and the essential role of a builder or architect, in the construction of any structure, whether that structure be a house or an apartment block. 933 Having regard to the evidence tendered in this proceeding, I have been persuaded by Henley Arch that there is not a meaningful distinction between, on the one hand, building and construction services and, on the other hand, building and construction services in respect of multi-dwelling residential apartment. 934 Even if that position be doubted, there is evidence that Henley Arch has used the "HENLEY" trade mark in respect of multi-dwelling residential apartments. In the Third Harvey Affidavit, Mr Harvey gave evidence that, in 2015, Henley Arch began planning to undertake multi-dwelling residential apartment construction in an estate developed by Henley Arch in Clyde North, which Henley Arch named "Kilora Park". Annexure "JH-116" to the Third Harvey Affidavit set out initial apartment designs for the site, including an underground basement car park. The block of homes was two storeys high (in addition to the proposed underground basement car park), with separate dwellings both vertically and horizontally to make up 16 dwellings (units). The "HENLEY" trade mark was used as follows in correspondence dated 18 July 2018 to the relevant local council concerning Henley Arch seeking approval for this development: 935 This evidence may only demonstrate a "relatively small amount of use": E & J Gallo at [64]. However, together with the relatively extensive use of the "HENLEY" trade mark in relation to home-building generally, in my view, it is sufficient to constitute ordinary and genuine use judged by commercial standards: E & J Gallo at [64].

[158]

The discretion in s 101(3) 936 If "satisfied that it is reasonable to do so, … the court may decide that the trade mark should not be removed from the Register even if the grounds on which the [non-use] application was made have been established": s 101(3), TMA. 937 As to the discretion in s 101(3), in Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8; 202 FCR 490, in relation to s 101(3), the Full Court stated at [28]: … The requirement that "sufficient reason" be shown for leaving the trade mark on the Register stems from earlier authorities which were considering the position under the 1955 Act where there was no equivalent of s 101(3): Re Carl Zeiss Pty Limited's Application ("Carl Zeiss") (1969) 122 CLR 1, Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158. To ask whether sufficient reason has been shown is apt to mislead. The question to be asked is whether it was reasonable not to remove the trade mark from the Register, although the trade mark had not been used during the statutory period. As the High Court said in a different context, "no paraphrase of the expression can be adopted as a sufficient explanation of its operation, let alone definition of its content": Spencer v The Commonwealth of Australia (2010) 241 CLR 118 at [58]. 938 The Full Court continued at [35] and [38]: … [T]he discretion under s 101(3) is a broad one … [I]t is a discretion limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act … The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion … 939 In Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, Dodds-Streeton J stated at [463]-[468]: An applicant to remove a trade mark for non-use is entitled to have the mark removed "unless sufficient reason appears for leaving it there" (see Re Carl Zeiss Pty Ltd's Application (1969) 122 CLR 1 at 11). However, the respondent is not required to demonstrate "exceptional circumstances" in order to enliven the discretion in s 101(3) to retain the registration (see [E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69 ("E&J Gallo")] at [198]). In Austin, the Full Court (Jacobson, Yates and Katzmann JJ) recently considered s 101(3). Their Honours stated at [28]: The question to be asked is whether it was reasonable not to remove the trade mark from the Register, although the trade mark had not been used during the statutory period. Their Honours noted that s 101(3) was expressed in the present tense and the position must be assessed at the time the discretion is to be exercised (at [41]). In E&J Gallo at [210], Flick J described the exercise of the discretion in s 101(3) as follows: Although the "guiding principle behind the discretion is public interest, particularly in the integrity of the register" (Kowa Co Ltd v Organon (2005) 223 ALR 27…), the private commercial interests of both Gallo Winery and Lion Nathan remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme - or, at least - a predominant interest is the maintenance of the integrity of the register: Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45… Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised. Their Honours observed that (at [42]): [42] … the Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public's interests. There is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. There is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment. The provisions of the 1955 Act with respect to defensive registrations and certification marks were recognitions that the interests of the owners of registered trade marks may go beyond that of indicating trade origin. In Yale Electric Corporation v Robertson (1928) 26 F 2d 972 at 973, Judge Learned Hand said of this interest: "that one merchant shall not divert customers from another by representing what he sells as emanating from the second. This has been, and perhaps even more now is, the whole Law and the Prophets on the subject, though it assumes many guises." In this decade, legislation in the United States, the United Kingdom, and now in Australia to varying degrees has extended the infringement action to restrain activities which are likely adversely to affect the interests of the owner of a "famous" or "well-known" trade mark by the "dilution" of its distinctive qualities or of its value to the owner. In Austin, the Full Court affirmed that Flick J's view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]). In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and whether the registered proprietors were aware of the applicants' sales under the mark. (Emphasis added.) 940 Having regard to those principles, even if I was not persuaded that Henley Arch had relevantly used the HENLEY mark, I would exercise the discretion in s 101(3) of the TMA. I am satisfied that it is reasonable that the HENLEY mark should not be removed from the Register. This is so for the following reasons. 941 First, a relevant factor in exercising the discretion in s 101(3) is "whether the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark": E & J Gallo at [202]. In this proceeding, Henley Constructions and Mr Sarkis took no such steps. 942 Second, I have found above 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. I have found that 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 have found 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. As stated above, I do not accept that Mrs Sarkis, Mr Sarkis and Henley Constructions acted with "commercial honesty" or acted with "common honesty" when they applied to ASIC to register the names "Henley Constructions" and "Henley Developments", or when they adopted and continued to use the name "Henley Constructions". The use of the name "Henley Constructions" has been tainted by that dishonesty from the date of adoption. 943 Third, even if Henley Arch's use of "HENLEY" in New South Wales, or Henley Arch's use in relation to "multi-dwelling residential apartment buildings", could be characterised as a relatively small amount of use, on the evidence, in my view, there has been sufficient use by Henley Arch. I am not persuaded that it could be fairly stated that the "HENLEY" mark is unused in New South Wales, and I am not persuaded that the "HENLEY" mark has been abandoned in New South Wales. In my view, the number of visits to the henley.com.au website by persons in New South Wales, being 33,182 and 26,082 persons in 2016 and 2017 respectively, shows Henley Arch has at least a residual reputation in New South Wales in relation to home building. 944 In these circumstances, in my view, it is reasonable not to remove the "HENLEY" mark from the Register.

[159]

HENLEY PROPERTIES and the HENLEY PROPERTIES Device Mark 945 Henley Constructions contends that "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark should be removed from the register on the basis that, in the three year Non-Use Period, Henley Arch failed to use "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark in Australia for the relevant services. Alternatively, Henley Constructions contends that "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark should be removed from the register on the basis that, in the Non-Use Period, Henley Arch failed to use "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark in Australia in part for the relevant services, namely it failed to use it in the State of New South Wales. 946 Alternatively, Henley Constructions contends that "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark ought be subject to the following limitation by way of partial removal: 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. 947 Alternatively, Henley Constructions contends that "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark ought be subject to the following further limitation under ss 92(4)(b)(i) and/or (ii) and ss 102(1)(b) and (2) of the TMA: "registration does not cover the State of New South Wales". 948 It will be recalled that the "HENLEY PROPERTIES" Device Mark is as follows: 949 It will also be recalled that the 2005 Henley Devices are as follows: 950 If "the … prescribed court, having regard to the circumstances of a particular case, thinks fit, … the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark": s 7(1), TMA. 951 In Optical 88 (No 2), Yates J considered the following marks: (1) ('707 mark); (2) ('966 mark); (3) (which was referred to as the "modified '707 mark"). 952 Yates J stated at [256]-[258]: Is the modified '707 mark a use of the '707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414. In my view a total impression of similarity does emerge from a comparison of the modified '707 mark with the '707 mark itself. I therefore find that, by using the modified '707 mark, the applicant used the '707 mark with additions or alterations not substantially affecting its identity. However, the '707 mark is registered only for goods, not services. It is also necessary to consider whether the use of the modified '707 mark can be considered to be a use of the '966 mark with additions or alterations not substantially affecting the identity of that mark. The applicant submitted that this question should be answered in the affirmative; the first respondent submitted that it should be answered in the negative. Although the '966 mark differs from the '707 mark, principally in the juxtaposition of OPTICAL 88 and "OPTICAL 88" (in Chinese characters), which constitutes an additional difference for present purposes between the '966 mark and the modified '707 mark, I am of the view that, when the modified '707 mark is compared with the '966 mark, a total impression of similarity still emerges between the two. I therefore find that the use by the applicant of the modified '707 mark was a use of the '966 mark with additions or alterations not substantially affecting its identity. 953 In Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6; 259 FCR 514, the Full Court stated at [59]-[60]: We have already referred to the facts in E&J Gallo. As we have mentioned, one of the issues that was considered by the High Court in that case was whether the word and device used by the registered owner was substantially identical to the registered mark BAREFOOT. The plurality referred at [20] to s 7(1) of the Act which provides as follows: If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. The plurality later said at [69]: [69] … The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1). 954 Having regard to s 7(1) of the TMA and the statements and reasoning set out above, in my view, a total impression of similarity emerges from a comparison between the "HENLEY PROPERTIES" Device Mark and the 2005 Henley Devices. Both the "HENLEY PROPERTIES" Device Mark and each of the 2005 Henley Devices consist of a triangular device which, in my view, is substantially identical in each of the marks. Each mark contains the capitalised word "HENLEY". In each of the "HENLEY PROPERTIES" Device Mark and the 2005 Henley Devices, the triangular device is shown to the left of the word "Henley". It would appear that, in the "HENLEY PROPERTIES" Device Mark, the word "Henley" is perhaps in a different font when compared to the word "Henley" in the 2005 Henley Devices. The 2005 Henley Devices appear to use a thinner style of font. However, I do not accept that this change in font substantially affects the impression of similarity which emerges from the marks. Any such change in font is simply too minor to constitute a meaningfully identifiable change. The "HENLEY PROPERTIES" Device Mark includes the capitalised word "PROPERTIES", but it is in much smaller font, and it is encased by a rectangular bar, whereas the 2005 Henley Devices do not display the word "Properties". In my view, that is the only relevant change between the "HENLEY PROPERTIES" Device Mark and the 2005 Henley Devices. The question becomes whether that change substantially affects the identity of the "HENLEY PROPERTIES" Device Mark. In my view, it does not. In my view, the dominant and essential feature is the word "Henley", and consumers are likely to identify the services sold under the registered trade mark with the device by reference to the word "Henley". In my view, the word "properties" is descriptive of the services provided which does not affect the substance of the brand conveyed, being "Henley". One of the 2005 Henley Devices also has a curved line which appears under the triangular device, and this curved line does not appear in the "HENLEY PROPERTIES" Device Mark. However, that curved line, in my view, is a very minor addition. It does not affect the total impression of similarity which emerges from a comparison of the relevant marks. As a consequence, by reason of s 7(1) of the TMA, use of the 2005 Henley Devices is use of "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark. 955 Once it is accepted that use of the 2005 Henley Devices is use of "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark, I have already set out above use of the 2005 Henley Devices in relation to the "HENLEY" trade mark. Once that evidence of use is appreciated, the following matters follow. 956 I have already set out above, in relation to the "HENLEY" trade mark, how the 2005 Henley Devices were used during the Non-Use Period. Given use of the 2005 Henley Devices is also use of "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark, I accept that Henley Arch has shown that it has used "HENLEY PROPERTIES" and the "HENLEY PROPERTIES" Device Mark during the Non-Use Period. 957 I accept that, during the Non-Use Period, there has been in good faith, use of "HENLEY PROPERTIES" or the "HENLEY PROPERTIES" Device Mark in relation to services at least "dealt with" in New South Wales: s 100(3)(a) of the TMA. 958 Even if that position be doubted, I would exercise the discretion in s 101(3) of the TMA to not remove, or not partially remove, "HENLEY PROPERTIES" or the "HENLEY PROPERTIES Device Mark", for the reasons stated in relation to such a discretion being exercised in relation to the "HENLEY" trade mark, and for two further reasons. First, having regard to the evidence I was taken to during the trial of this proceeding, in my view, a limitation to the scope of registered services would not ameliorate the likelihood of a number of people in Australia (including in New South Wales) being deceived or confused, but would in fact create fragmented ownership of a mark that consumers would rightly expect to be owned by one entity. Second, on the evidence, I have been persuaded that building and construction of houses and townhouses/terraces are services of the same description as building and construction of multi-dwelling residential apartments buildings.

[161]

Henley Arch's submissions 960 Henley Arch submits that these pleas should be accepted for the following reasons. 961 First, Henley Arch submits that Mr Sarkis is the sole director of Henley Constructions. 962 Second, Henley Arch submits that there is no evidence that anyone other than Mr Sarkis was at any relevant time responsible for decisions as to the management of Henley Constructions at the relevant times. Henley Arch submits that Mr Sarkis was responsible for the decision to use the trade mark "Henley Constructions", and variations of that mark in each of the logos outlined in the Particulars Table. 963 Third, Henley Arch submits that Mr Sarkis is the sole shareholder of Henley Constructions. Henley Arch submits that Mr Sarkis alone received profits from the company. 964 Fourth, Henley Arch submits that, in Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235, there was no significant difference between the way that the directors operated the business before incorporation and the way in which they operated it through the corporate vehicle after it was formed. Henley Constructions submits that this consideration is not relevant to the present case. 965 Fifth, Henley Arch submits that the directors were knowingly involved in the company's wrongdoing. Henley Arch submits that, under cross-examination, it was apparent that, although Mr Sarkis had others assist him in preparing the marketing material and branding of Henley Constructions, he alone had the authority to give ultimate approval and maintained ultimate control. Henley Arch submits that, at least from the date of receiving the letter of demand from Henley Arch on 13 April 2017, Mr Sarkis knew of the elements of Henley Arch's claim against Henley Constructions. 966 Sixth, Henley Arch submits that Mr Sarkis was instrumental in establishing Henley Constructions and in choosing the "Henley Constructions" name, logo and branding style, initially in 2006 and ongoing to date, including the ongoing use since being expressly notified of Henley Arch's rights. Henley Arch submits that this use included alterations to the logo in 2017 to reduce the prominence of the word "Constructions". Henley Arch submits that Mr Sarkis's actions have been deliberate, and at least reflect a reckless indifference to the risk of creating consumer confusion.

[162]

Mr Sarkis's submissions 967 Mr Sarkis submits that, if the Court finds Henley Constructions has engaged in trade mark infringement or other unlawful conduct, Mr Sarkis should not be found liable as well. Mr Sarkis submits that the necessary factual foundation for such a liability is not present. 968 Mr Sarkis submits that Mr Sarkis provided sound and convincing evidence of his innocent state of mind in adopting and using the "Henley Constructions" name. Mr Sarkis submits that Mrs Sarkis's evidence corroborated Mr Sarkis's account of the innocent adoption of "Henley Constructions". 969 Mr Sarkis submits that the subjective innocence of Mr Sarkis's actions is critical to why the case against Mr Sarkis fails at the outset. 970 Mr Sarkis submits that the authorities make plain that the question of a director's subjective knowledge is highly relevant to a finding of accessorial liability to trade mark infringement proceedings. Mr Sarkis submits that such a finding against company officers in their personal capacity ought be reserved almost exclusively to cases in which the company officer has failed to establish they had an innocent state of mind in their alleged conduct. Mr Sarkis submits that in order for a company officer to be liable for any trade mark infringement of his or her company, he or she must make the infringement "his or her own by acting other than in the capacity of agent": Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130 (Optical 88) at [53]. 971 Mr Sarkis submits that one cannot make unlawful conduct "his or her own" with an innocent state of mind. Mr Sarkis submits that, if the Court accepts that Mr Sarkis's adoption of the name was honest, it is practically impossible to see how he can be found a joint tortfeasor. 972 Mr Sarkis also submits that, if Henley Constructions has been found to have breached the ACL, it does not follow that Mr Sarkis will be "knowingly concerned" in the contravention because actual knowledge of all essential elements of the contravention will be required: In-N-Out Burgers Inc v. Hashtag Burgers Pty Ltd [2020] FCA 193 per Katzmann J at [305].

[163]

Principles 973 In Sporte Leisure Pty Ltd v Paul's International Pty Ltd (No 3) [2010] FCA 1162; 275 ALR 258, Nicholas J reviewed a series of authorities and stated at [118]: I think the authorities demonstrate that something more will usually be required if a director is to be held liable as a joint tortfeasor than a simple finding that he or she, while acting in that capacity, caused or directed his or her company to perform acts which are later held to be infringing acts. The extent of the director's personal involvement in the commission of the infringing acts is no doubt critical. But his or her state of mind is itself an important aspect of that involvement. That does not mean that knowledge that the relevant acts are infringing is a prerequisite to liability. The authorities are clear in holding that it is not. Even so, a finding that a director who held an honest belief that the acts which he or she directed or procured were not unlawful is a significant consideration telling against the director's liability … 974 In Optical 88 (No 2), the Full Court stated at [52]-[53]: As the respondents submitted, there is no instance in the evidence supporting any inference that the second respondent was carrying out any activity other than in his capacity as a director and manager of the first respondent. The evidence does not support a conclusion that the second respondent made the infringements of the first respondent his own (Sporte Leisure Pty Ltd v Paul's International Pty Ltd (No 3) (2010) 88 IPR 242 ; [2010] FCA 1162 at [113], but see the entire discussion at [108]-[116] and the cases cited therein). Accordingly, this is not a case in which the acts of the second respondent were other than corporate acts (see, by contrast, Houghton v Arms (2006) 225 CLR 553; [2006] HCA 59). This result, as the respondents submitted, reflects the structure of the legislation. By s 120(1) and (2) of the Trade Marks Act, the person who infringes the trade mark is the person who "uses" the mark in the specified circumstances. In the case of a corporation, the use of the mark will be by the corporation even though that use is achieved through the corporation's human agents. Under s 122 there are defences. The defences are available to the person using the trade mark in the nominated circumstances. One of the defences, use in good faith of a person's name (s 122(1)(a)(i)), would make little sense if the relevant use (and thus the relevant name) could be a use by the corporation's human agent rather than the corporation itself. In such a case, if the trade mark is the corporation's name, the corporation would have the benefit of the defence but the human agent of the corporation would not. In other words, the legislative scheme is inconsistent with the imposition of personal liability for trade mark infringement on agents of corporations unless the agent has somehow made the use his or her own by acting other than in the capacity of agent. 975 In JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 329 ALR 625, the Full Court stated at [335] and [342]-[343]: As a matter of foundation principle then, in order for a director to be regarded as a joint tortfeasor with the company of which he or she is a director, there must be concurrence in the acts of both the company and the director causing the damage rather than coincidence of roles comprised of the company as an entity doing something and a director discharging duties as a director of the company doing that thing. This may be the implicit principled source of the notion articulated in the line of authority to the effect that the director must act, engage, so as to "make" the tort of the company "his or her own", that is, a demonstrated concurrence in the acts giving rise to the civil wrong causing the damage in suit rather than a coincidence of rolls. … In Allen Manufacturing Company Pty Ltd v McCallum and Company Pty Ltd (2001) 53 IPR 400, the Full Court observed at [43] that the difference in the tests between the Performing Right Society decision and the Mentmore decision may be more apparent than real because, in practice, an act of direction or procurement by a director would generally meet the Mentmore test. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 177 ALR 231 (Root Quality), Finkelstein J, like Le Dain J, thought that purpose was an important consideration. His Honour seemed to focus on a reasonably high threshold of involvement on the part of the director. His Honour put both matters this way at [146]: The director's conduct must be such that it can be said of him that he was so personally involved in the commission of the unlawful act that it is just that he should be rendered liable. If a director deliberately takes steps to procure the commission of an act which the director knows is unlawful and procures that act for the purpose of causing injury to a third party, then plainly it is just that liability should be imposed upon him. [emphasis added] However, at [146], his Honour also observed that "lesser conduct may suffice" and an example of lesser conduct is a director acting with reckless indifference to whether his company's act was unlawful and would cause harm. His Honour said that such conduct "may also suffice" although in the end it would depend, as all cases do, upon the facts of each particular case. 976 In Flexopack, Beach J stated at [333]-[340]: Let me first deal with what is required to establish that an individual director is a joint tortfeasor with the company. Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 elaborates on a number of different approaches to establishing such joint liability. They are variously that the alleged joint tortfeasor must have: (a) done something more than acting as a director and been involved in invading the applicant's rights (at [83] and [84] per Emmett J); (b) had a close personal involvement in the infringing acts of the company (at [291] per Besanko J); or (c) made the company's tort his own (at [405] per Jessup J). The variation between these particular formulations is of little moment in the present case although I note that there are conceptual differences but generally broad consistency (see Sporte Leisure Pty Ltd v Paul's International Pty Ltd (No 3) (2010) 88 IPR 242; 275 ALR 258 at [108] to [118] per Nicholas J). In Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 at [94] to [105], Kenny J accepted (albeit in the context of a summary judgment application) that there was a strong prima facie case that two of the directors of the respondent who were "in effective control of the business of [the company]" and who were "intimately involved in the company's activities" were liable as joint tortfeasors and as persons involved in contraventions of applicable consumer law provisions. Relevantly, Kenny J found that the directors knew that the company's use of the applicant's trade mark on business cards and letterhead was, or was likely to be, infringing. Her Honour concluded that there was a strong case that the directors were personally involved in the trade mark infringements, passing off and statutory breaches of the applicable consumer law provisions by the company and used the company for their own wrongdoing. Similarly, in Taleb v GM Holden Ltd (2011) 94 IPR 459; 286 ALR 309 at [18] to [23] per Finn and Bennett JJ, the Full Court upheld the conclusion of the primary judge that the appellant was liable as a joint tortfeasor for the trade mark infringement and passing off of the company. The appellant had established the business and directly controlled it until his son took over its day-to-day management. A further example of the manner in which these principles have been applied can be found in Bob Jane. Besanko J found that there was sufficient evidence to find both Mr Jane (who set up the companies) and Mr Rigon (who oversaw the impugned website), both directors of the relevant company, to be joint tortfeasors. His Honour summarised the various formulations in Keller at [142] to [148] and considered the liability of Mr Jane to follow from his involvement in the company to be "quite plain", his Honour apparently applying his preferred formulation of "a close personal involvement". In relation to accessorial liability concerning the contraventions of the Australian Consumer Law, the following may be noted. The grant of an injunction may include any person who is involved in a contravention. The Australian Consumer Law defines a person involved in a contravention in the following terms (s 2(1)): involved: a person is involved, in a contravention of a provision of this Schedule or in conduct that constitutes such a contravention, if the person: (a) has aided, abetted, counselled or procured the contravention; or (b) has induced, whether by threats or promises or otherwise, the contravention; or (c) has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; or (d) has conspired with others to effect the contravention. Further, damages can be awarded against persons involved in a contravention. It is necessary to show inter alia that the person had knowledge of the essential matters that make up the contravention: Yorke v Lucas (1985) 158 CLR 661 at 670 per Mason ACJ, Wilson, Deane and Dawson JJ. Knowledge of each of the essential elements of the contravention on the part of the individual must be established: Keller at [334] to [337] per Besanko J. 977 In Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; 385 ALR 514, the Full Court stated at [138]-[140]: Plainly enough, to incur personal liability for a tort committed by a company, a director must be acting beyond their proper role as a director. In JR Consulting, the Full Court approved the statement of Besanko J in Keller where at [291] his Honour said that: … A "close personal involvement" in the infringing acts by the director must be shown before he or she will be held liable. The director's knowledge will be relevant. In theory, that knowledge may range from knowledge that the relevant acts are infringing acts to knowledge of an applicant's registered designs to knowledge of acts carried out by others. … [I]n our view, the combined effect of five matters found by [the primary judge] leads us to the view that Messrs Kagan and Saliba were in fact joint tortfeasors. First, they were the sole directors of Hashtag Burgers. Secondly, they alone made decisions as to its management. Thirdly, they alone received the profits derived from it … Finally, … Messrs Kagan and Saliba were knowingly involved in the company's wrongdoing. (Emphasis added.) 978 Sections 232(1) and 232(2) of the ACL provide: (1) A court may grant an injunction, in such terms as the court considers appropriate, if the court is satisfied that a person has engaged, or is proposing to engage, in conduct that constitutes or would constitute: (a) a contravention of a provision of Chapter 2, 3 or 4; or (b) attempting to contravene such a provision; or (c) aiding, abetting, counselling or procuring a person to contravene such a provision; or (d) inducing, or attempting to induce, whether by threats, promises or otherwise, a person to contravene such a provision; or (e) being in any way, directly or indirectly, knowingly concerned in, or party to, the contravention by a person of such a provision; or (f) conspiring with others to contravene such a provision. (2) The court may grant the injunction on application by the regulator or any other person. 979 Section 80(1) of the TPA was in similar terms to the above ACL sections. 980 In In-n-out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193; 377 ALR 116, Katzmann J stated at [302]-[306]: The final substantive question is whether, from the time of the incorporation of Hashtag Burgers on 23 June 2017, Mr Kagan or Mr Saliba or both were jointly liable with Hashtag Burgers for the infringing conduct and passing-off and whether they were accessories with Hashtag Burgers with respect to the contraventions of the ACL by Hashtag Burgers. It is convenient to begin with the ACL contraventions. In order to recover damages against all the respondents, each of them must have been "involved in" the contraventions: ACL, s 236. Section 2 of the ACL defines the circumstances in which a person is involved in a contravention. Those circumstances are where the person: (a) has aided, abetted, counselled or procured the contravention; or (b) has induced, whether by threats or promises or otherwise the contravention; or (c) has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; or (d) has conspired with others to effect the contravention. This definition reproduces the substance of s 75B of the TPA, which was considered by the High Court in Yorke v Lucas (1985) 158 CLR 661. In that case the plurality (Mason ACJ, Wilson, Deane and Dawson JJ) held at 670 that to be knowingly involved in a contravention the person must be an intentional participant and that the necessary intention is based on knowledge of the essential elements of the contravention, that is, knowledge of the essential facts constituting the contravention, although it is not necessary that the person also know that the essential elements amount to a contravention: Yorke v Lucas at 667; Kovan Engineering (Aust) Pty Ltd v Gold Peg International Pty Ltd [2006] FCAFC 117; (2006) 234 ALR 241 at [114] (Heerey and Weinberg JJ) and [116] (Allsop J). Actual knowledge is required; imputed or constructive knowledge is not enough: Yorke v Lucas at 670; Young Investments Group Pty Ltd v Mann [2012] FCAFC 107; 293 ALR 537 at [11]. But actual knowledge may be inferred. And knowledge may more readily be inferred against a respondent who fails to give evidence, provided that the proven facts are capable of raising the inference: see, for example, Lloyd v Belconnen Lakeview Pty Ltd [2019] FCA 2177 at [323] (Lee J) and the cases referred to there. It is important to recall in this context, as the plurality noted in Yorke v Lucas at 670, that a contravention may be established irrespective of whether there was an intention to mislead or deceive and even though the alleged contravener acted honestly and reasonably. In closing submissions the respondents' counsel conceded that, if I were to find that the applicant's case against the company were made out, then Messrs Kagan and Saliba had been knowingly involved in the contraventions. That is sufficient to dispose of the point insofar as it concerns liability for misleading or deceptive conduct. I find that both Messrs Kagan and Saliba were knowingly concerned in the contraventions by Hashtag Burgers of s 18 of the ACL.

[164]

Application to facts 981 Having regard to those principles, I make the following findings in relation to Mr Sarkis's involvement in respect to the trade mark infringement claims and the ACL claims. 982 First, I find that Mr Sarkis is the sole director and shareholder of Henley Constructions. 983 Second, I accept Henley Arch's submission that there is no evidence that anyone other than Mr Sarkis was at any relevant time responsible for decisions as to the management of Henley Constructions. 984 Third, I find that Mr Sarkis was responsible for the decision to use the mark "HENLEY CONSTRUCTIONS" and the variations of that trade mark. Mr Sarkis is the sole shareholder of Henley Constructions and he alone received the profits from the company. Whilst Mr Sarkis had others assist him in the preparation of marketing material and the branding of Henley Constructions, I find that it was Mr Sarkis alone who gave the ultimate approval to the marketing and branding of the mark "HENLEY CONSTRUCTIONS". 985 Fourth, I find that Mr Sarkis, as the sole director and secretary of Henley Constructions and the company's sole shareholder, was instrumental in deciding to use the name "Henley Constructions" and variations of that mark and logo initially in 2006 and then continued to use the trade mark, its variations and logos after receiving Henley Arch's letter of demand on 13 April 2017. I find that Mr Sarkis' actions were deliberate and recklessly indifferent to the risk of creating consumer confusion. In light of the findings I have made above in relation to Mr Sarkis's conduct, Mr Sarkis was knowingly involved in the contraventions of the ACL and the infringement of Henley Arch's trade marks, and knowingly involved in the Henley Constructions' wrongdoing. 986 For these reasons, I find that Mr Sarkis is liable as a joint tortfeasor for Henley Constructions' trade mark infringement and liable for aiding and abetting or being knowingly concerned, directly or indirectly, in Henley Constructions' contravention of the ACL.

[167]

Henley Arch's submissions 990 Henley Arch submits that the declaratory relief sought is appropriate in light of the conduct of Henley Constructions and Mr Sarkis. 991 Henley Arch submits that it first became aware of Henley Constructions when notified by one of its suppliers, Mr Damien Boyer, on 22 February 2017. Henley Arch submits that, from that time, Henley Arch acted promptly, notifying Henley Constructions of its rights by way of a letter of demand on 13 April 2017. 992 Henley Arch submits that the conduct of Henley Constructions and Mr Sarkis, since being put on notice of Henley Arch's rights, shows that they will continue to engage in this conduct unless restrained. 993 Henley Arch submits it is appropriate to award the non-pecuniary relief, as follows: (1) Declarations that the respondents, by using the signs: (a) Henley; and/or (b) Henley Constructions; and/or (c) Henley Constructions Pty Ltd; and/or; (d) the first Henley Constructions logo, the second Henley Constructions logo and the third Henley Constructions logo; and/or (e) the Henley Display Gallery; and/or (f) 1300 HENLEY; and/or (g) www.henleyconstructions.com.au; and/or (h) www.henleygallery.com.au, in the course of trade as a trade mark in relation to building and construction services have used signs substantially identical with, or deceptively similar to, each of Henley Arch's marks without the licence or authority of Henley Arch, and have thereby infringed those marks pursuant to s 120(1) of the TMA. (2) An order that the respondents, whether by themselves, their directors, officers, employees or agents or otherwise, be restrained from infringing each of Henley Arch's Registered Trade Marks, and in particular from using as a trade mark, without the licence or authority of Henley Arch, any sign which is substantially identical with, or deceptively similar to, any of the Registered Henley Marks, including the signs: (a) Henley; and/or (b) Henley Constructions; and/or (c) Henley Constructions Pty Ltd; and/or; (d) the first Henley Constructions logo, the second Henley Constructions logo and the third Henley Constructions logo; and/or (e) the Henley Display Gallery; and/or (f) 1300 HENLEY; and/or (g) www.henleyconstructions.com.au; and/or (h) www.henleygallery.com.au, in the course of trade in relation to building or construction services. (3) Declarations that by making the relevant contravening representations, the respondents have: (a) engaged in conduct which is misleading or deceptive, or likely to mislead or deceive, in contravention of s 18, of the ACL; (b) made false representations in contravention of s 29(1)(g) of the ACL; and (c) made false representations in contravention of s 29(1)(h) of the ACL. (4) An order that the respondents, whether by themselves, their directors, officers, employees or agents or otherwise, be permanently restrained from: (a) promoting building or construction services by reference to phrases incorporating the word "Henley", including "Henley", "Henley Constructions", "Henley Constructions Pty Ltd", "the Henley Display Gallery"; "1300 HENLEY", "www.henleyconstructions.com.au" and "www.henleygallery.com.au" and/or in the first Henley Constructions logo, the second Henley Constructions logo or the third Henley Constructions logo; (b) representing that they are Henley Arch; (c) representing that they are affiliated with Henley Arch; (d) representing that they are sponsored or approved by Henley Arch; (e) representing that their services are provided by, or with the licence or authority of, Henley Arch; (f) representing that their services are affiliated with Henley Arch; and/or (g) representing that their services are sponsored or approved by Henley Arch. (5) An order requiring the respondents to take all steps necessary to cancel, or transfer to Henley Arch, at Henley Arch's election: (a) the registration for the domain name www.henleyconstructions.com.au; and (b) the registration of the domain name www.henleygallery.com.au; and (c) the phone number 1300 HENLEY.

[170]

DISPOSITION 1003 On 31 March 2021, the parties filed an amended consolidated statement of issues which the parties agreed would determine all matters raised on the pleadings. By way of summary, the following is each relevant question recorded in that statement of issues, and this judgment's answer to that question: Trade mark Infringement (1) Has Henley Constructions infringed each, or any, of Henley Arch's registered marks (as defined in [8] of the Statement of Claim) pursuant to s 120 of the TMA? For the reasons given in the section above titled "Trade Mark Infringement" at [454]-[489], the answer to that question is: "Yes", Henley Constructions has infringed each of the Registered Henley Arch marks (as defined in [8] of the Statement of Claim). In relation to the specific questions asked by the parties pursuant to issue 1, my answers are as follows: (a) as to the question, "has Henley Constructions used "HENLEY" as a trade mark?". The answer to that question is: "Yes"; (b) as to the question "is "HENLEY CONSTRUCTIONS" substantially identical or deceptively similar to each of the Registered Henley Marks?". The answer to that question is: "Yes". (2) Was Henley Constructions' initial use of "HENLEY CONSTRUCTIONS" and "HENLEY" a good faith use of Henley Constructions' name pursuant to s 122(1)(a)(i) of the TMA? For the reasons given in the section above titled "Henley Constructions' Defence - Good Faith Use of Own Name (Section 122(1)(a)(i))" at [747]-[757], the answer to that question is "No". As a consequence, there is no need to answer whether that use has continued to be in good faith, and if not, from when. (3) Does Henley Constructions have a defence to infringement under s 122(1)(fa) of the TMA? For the reasons given in the section above titled "Henley Constructions' Defence - Right to Register (section 122(1)(fa))" at [670]-[709], the answer to that question is "No". (4) Was Henley Constructions' first use of each of "HENLEY CONSTRUCTIONS" and "HENLEY" prior to the earliest of: (a) registration of any of the 2016 relevant marks (as identified in [8(d)] to [8(f)] of the Statement of Claim); or (b) Henley Arch's first use of those marks (s 124 of the TMA)? For the reasons given in the section above titled "Henley Constructions' Prior Use Defence" at [766]-[771], the answer to that question is "No". ACL Contravention (5) Is Henley Constructions' conduct in using the names "HENLEY CONSTRUCTIONS" and "HENLEY" misleading or deceptive in contravention of s 18 of the ACL and a misrepresentation contrary to ss 29(1)(g) and 29(1)(h) of the ACL? For the reasons given in the section above titled "Australian Consumer Law" at [552]-[600], the answer to that question is "Yes". In addition, to the extent Henley Constructions' relevant conduct occurred before the introduction of the ACL, Henley Constructions' pre-ACL conduct contravened ss 52, 53(c) and 53(d) of the TPA. Ancillary liability of the Second Respondent (Mr Sarkis) (6) Was Mr Sarkis a joint tortfeasor with Henley Constructions in its infringement of each of the relevant marks? For the reasons given in the section above titled "Ancillary Liability of Mr Sarkis" at [981] - [986], that questions is "Yes". (7) Did Mr Sarkis aid, abet, counsel or procure or was he directly or indirectly knowingly concerned with Henley Constructions' contraventions of the ACL? For the reasons given in the section above titled "Ancillary Liability of Mr Sarkis" at [981] - [986], that questions is "Yes". Relief (8) Is Henley Arch entitled to the declarations and injunctions sought against Henley Constructions and Mr Sarkis? For the reasons given in the section above titled "Relief" at [987] - [988], the answer to that question is "Yes". (9) Is Henley Arch entitled to an account of profits from Henley Constructions in respect of profits made since notification of Henley Arch's rights and, if so, in what amount? For the reasons stated in the section above titled "Relief" at [989], that issue is not the subject of this judgment and will be the subject of a separate hearing. Trade mark validity - distinctiveness (10) At 18 December 2006, did trade mark registration number 1152820 ("HENLEY" mark) have sufficient inherent ability to distinguish the relevant services of Henley Arch (in respect of which the "HENLEY" mark is registered) from the relevant services provided by other traders? For the reasons given in the section above titled "Cross-claim: Distinctiveness" at [824], the answer to that question is "No". (11) If the answer to Issue 10 is "no", to the extent that the "HENLEY" mark had, to some extent, but not sufficiently, an inherent ability to distinguish the relevant services provided by Henley Arch from the relevant services provided by other traders, had it acquired or would it acquire sufficient distinctiveness in the market place so as to be able to obtain registration under the former ss 41(5) of the TMA (as in force at 18 December 2006) or, if it had no inherent ability to distinguish the relevant services provided by Henley Arch from the relevant services provided by other traders, had it acquired such distinctiveness by that date pursuant to s 41(6)? The answer is "Yes" in light of what I have determined at [825]-[830]. (12) If the answer to Issue 11 is "no", should the Court exercise its discretion pursuant to s 88 of the TMA not to amend or cancel the HENLEY word mark? The answer is "No" in light of what I have determined above at (11). Trade mark validity - false representations (13) Was the "HENLEY" mark accepted by the Registrar of Trade Marks on the basis of evidence or representations that were false in material particulars? For the reasons given in the section above titled "Cross-claim: Alleged False Representations to the Registrar" at [858]-[859], the answer to that question is "no" on the basis that this is a matter upon which Henley Constructions had the burden, which it has not discharged. (14) If the answer to Issue 13 is "yes", should the Court exercise its discretion pursuant to s 88 of the TMA not to amend or cancel the "HENLEY" mark? In light of the answer to Issue 13, this issue is unnecessary to decide. The answer to that question is not relevant in light of what I have determined above at (13). Trade mark validity - non-use

[172]

"HENLEY PROPERTIES" Device Mark (18) Is s 100(3)(a) of the TMA satisfied? In particular, did Henley Arch use the "HENLEY" mark (or a substantially identical mark) in good faith during the non-use period, being 7 October 2015 to 7 October 2018, anywhere in Australia in respect of the relevant services? For the reasons given in the section above titled "Cross-claim: Alleged Non-Use" [945]-[958], the answer to that question is "Yes". (19) Should the Court apply its discretion pursuant to ss 101(3) and 101(4) of the TMA to refuse to remove the "HENLEY PROPERTIES" Device Mark? For the reasons given in the section above titled "Cross-claim: Alleged Non-Use" [938], the answer to that question is "Yes". (20) Is s 102(1)(b) satisfied in respect of the "HENLEY PROPERTIES" Device Mark registration, namely, as at the date of the cross-claim, would "HENLEY CONSTRUCTIONS" properly be registered in the name of Henley Constructions in respect of the Broad Services or the Narrow Services (to the extent there is any real difference), with the limitation that such registration covers the State of New South Wales only? For the reasons given in the section above titled "Cross-claim: Alleged Non-Use" [937], the answer to that question is "No". (21) Is s 102(2)(b)(i) satisfied in respect of the "HENLEY PROPERTIES" Device Mark registration, namely did Henley Arch use the "HENLEY PROPERTIES" Device Mark during the non-use period in New South Wales in respect of the Broad Services and/or Narrow Services? For the reasons given in the section above this question need not be considered. (22) Should the Court apply its discretion pursuant to s 102(2) of the TMA to refuse to place either or both the services or geographic limitation on the "HENLEY PROPERTIES" Device Mark registration? For the reasons given in the section above titled "Cross-claim: Alleged Non-Use" [958], no such service or geographic limitation will be imposed. 1004 For the reasons given there will be judgment for Henley Arch. 1005 I direct that the parties confer and produce proposed minutes of orders to give effect to these Reasons for Judgment and to enable the preparation for a hearing on the relief sought by Henley Arch in relation to an account profits. I certify that the preceding one thousand and five (1005) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Anderson.

Henley Arch Pty Ltd v Henley Constructions Pty Ltd

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