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.