04 December 2024
In the recent case of Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100, the Federal Court of Australia ruled on a trade mark infringement dispute. Hemmes Trading, the owner of the trade mark "ESTABLISHMENT" (used for its Sydney restaurant, bar, and hotel business), claimed that Establishment 203, a restaurant in Brisbane, infringed its trade mark. The court found in favour of Hemmes Trading, ruling that:
1. Trade mark Infringement: The court determined that the use of "ESTABLISHMENT 203" was deceptively similar to "ESTABLISHMENT" and could confuse customers into thinking the two businesses were connected, even though they are unrelated. The addition of "203" did not eliminate the possibility of confusion.
2. Good Faith Defence Rejected: The Brisbane restaurant claimed a defense of good faith use of its own name, based on its abattoir's government-issued establishment number, "203." However, the court rejected this, noting that the restaurant had not conducted proper trade mark searches before choosing the name and continued using it even after receiving a cease-and-desist letter from Hemmes Trading.
3. Consumer Law Violation: The court also found that Establishment 203 breached Australian Consumer Law by misleading customers into believing it was affiliated with Hemmes Trading's business.
4. Cross-Claim for Cancellation Dismissed: The Brisbane restaurant's cross-claim to cancel the "ESTABLISHMENT" trade mark, arguing it was too generic, was dismissed. The court held that Hemmes Trading's trade mark had acquired distinctiveness through its long-standing use and reputation.
5. Injunction and Costs: The court issued an injunction preventing the Brisbane restaurant from using the name "ESTABLISHMENT 203" in connection with its business. The restaurant was given 30 days to comply, and it was ordered to pay Hemmes Trading’s legal costs.
No additional damages were awarded despite Hemmes Trading’s request, as the court found that the Brisbane restaurant's actions, while risky, were not flagrant enough to justify such penalties.
