Construction business loses its name to
The Federal Court has ordered
Henley Constructions to stop
using its name because it is
deceptively similar to ‘Henley
Properties’, a trade mark used
by a competitor.
How Henley Constructions lost a closely fought legal
contest to keep its name is found in the decision of the
Federal Court of Australia in Henley Arch Pty Ltd v
Henley Constructions Pty Ltd  FCA 1369 (5 November
2021), a decision by Justice Anderson.
#1 How was Henley
Constructions chosen as a name?
Patrick Sarkis was looking for a name for his new
construction company. Initially, the projects were to be in
Sydney, but his aim was to become Australia’s biggest
builder and developer.
Mr & Mrs Sarkis searched the internet to compile a list
of names. According to the Court:
“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.”
Mr Sarkis consulted with his accountant, his solicitor,
family, relatives, friends and contractors. They all liked
the name Henley. His accountant registered Henley
Constructions Pty Ltd with ASIC on 13 December 2006. They
thought that if the company name was available for
registration with ASIC, they could build their brand around
But there was already a company in the building industry
with ‘Henley’ in its name. The Court said:
“Mr and Mrs Sarkis knew of the Henley Properties
Group, knew of the website www.henley.com.au, knew that
Henley Arch was an existing business operating in
Victoria, South Australia and Queensland in respect of
the building and construction of homes and proceeded to
register the name “Henley Constructions” notwithstanding
that those names were likely to mislead or deceive
consumers into thinking that there was a connection with
It was more than a poor choice of name. The Court said:
“The use of the name “Henley Constructions” has been
tainted by that dishonesty from the date of adoption.”
#2 The Henley Arch Trade
Henley Arch was founded in 1989 in Melbourne. The origin
of its name was not explained.
Since the mid-1990s, Henley Arch has built both
‘contract’ homes and ‘spec’ homes for owner-occupiers and
investors. In Victoria, South Australia, Western Australia
and Tasmania, it used the registered business names Henley
Homes and Henley Properties. In Queensland, it used the
‘Plantation Homes’ brand and in New South Wales, the
‘Edgewater Homes’ brand, with references to the Henley brand
in its marketing materials. It builds more than 2,000 homes
On 18 December 2006, it filed for 3 trade marks: HENLEY,
HENLEY WORLD OF HOMES and
Building and construction services (class 37); and
Architectural, engineering, design, drafting and interior
design services (class 42). The trade marks were registered.
In 2016, it filed for 3 more trade marks: HENLEY ESSENCE,
HENLEY RESERVE and HENLEY COLLECTION for similar services.
The trade marks were registered.
In addition, since 2005 it has used various devices such
The Henley Properties Group has a domain name, a website
and social media presence on LinkedIn, Instagram, Pinterest,
Facebook, YouTube and the Vimeo streaming platform.
#3 The Henley Constructions
The first project undertaken by Henley Constructions was
24 residential units in a property development at Camperdown
in Sydney, which commenced in early 2007 and was completed
in June 2008.
In the years that have followed, Henley Constructions has
completed over 20 projects. It has focused mostly on the
construction of residential unit blocks with about 25 units
and some mixed use, commercial units and private home
construction and renovations in and around suburban Sydney.
It has not registered any trade marks. It has a domain
name (henleyconstructions.com.au), a website and a social
media presence. It has a logo.
In 2017 it adopted a new logo in which the word ‘Henley’
was more prominent:
The logo and the words “HENLEY’ and ‘HENLEY
CONSTRUCTIONS’ were used on its website, on social media, on
marketing materials, signage at developments including on
fencing, on cranes, in galleries, and as hashtags
#4 The Cease and Desist
On 13 April 2017, Henley Arch sent Mr Sarkis of Henley
Constructions a letter headed: UNAUTHORISED USE OF HENLEY
After outlining the facts, the letter stated:
“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.”
The letter was prompted by an email from a supplier to
Henley Properties which provided a hyperlink to a news story
which referred to Henley Constructions. In his email the
sender wondered whether Henley Constructions “[m]ight be
just another business in Sydney that goes by the name of
This was the first time that Henley Properties Group
became aware of Henley Constructions.
Instead of changing its name, Henley Constructions
responded by “ramping up” its branding (see above) and
In 2017, its total advertising spend was ten times higher
than 2016, comprising $86,500 for “marketing and website
design, uniform attire”, $33,000 for “crane signage”, $5,280
for “site safety mesh” and $198 for the “1300 HENLEY phone
number”. These are examples:
#5 The Consideration by the
It is beyond the scope of this article to closely analyse
the lengthy judgment, which consists of 1005 paragraphs.
This is a selection of issues and findings:
A registered trade mark provides powerful protection
against names or logos which are substantially identical or
deceptively similar. [see s 120(1) Trade Marks Act
In this case, the question was: “Was there a reasonable
probability of deception or confusion?” between the name -
Henley Constructions and the trade marks registered by
- Some of the uses were not trade mark uses – such as
the phone word 1300HENLEY or HENLY or HNLY on a licence
plate of a vehicle.
- But the use of the logo and the mark (the name)
“HENLEY CONSTRUCTIONS” in all other places were trade
mark uses. The Court found that the logo and the mark
were substantially identical to “HENLEY”, “HENLEY
PROPERTIES” and the other “HENLEY” trade marks, on the
basis that the word “Henley” is the “dominant
- They were also deceptively similar on the basis that
“a number of persons will be caused to wonder
whether building and construction services provided
under the Henley Constructions mark came from the owner
of the Henley Properties mark.”
- The Court found that Henley Constructions has used,
and uses, its logo and mark as a badge of origin (a
brand) to distinguish its building and construction
services from other building and construction
businesses’ services, and so the requirements of s
120(1) were satisfied.
A claim was made for breach of the Australian Consumer
Law (ACL). The Court found 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
Henley Constructions raised the trade mark defence of
‘right to register’, relying upon the fact that although it
and Henley Properties were in the building and construction
industry, they built different buildings - Henley
Constructions built multi-dwelling residential apartment
buildings while Henley Properties built detached and
- The Court did not agree: “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.”, the difference being that
“apartments are built on top of each other, rather than
side by side” as single dwelling houses or terrace
houses are. Further, “there is a degree of overlap in
the building steps”, and architects and builders are
licensed to build all types of buildings.
Henley Constructions asserted that the trade marks should
be cancelled because “Henley” was not distinctive – that it
was a descriptive geographical name (there are suburbs of
“Henley”, “Henley Brook” and “Henley Beach”) and was a
surname (Henley or Henly).
- The Court did not agree: It found that “Henley” had
“become distinctive of the building and construction
services provided by Henley Arch”.
Analysis - What should
Henley Constructions have done?
The turning point in this case was the Cease and Desist
letter in 2017. Proper legal advice at that time would have
highlighted the risks of continuing to use the name and
being caught up in legal proceedings, versus the
inconvenience of changing the name.
The letter was no idle threat. An internet search would
have revealed that Henley Arch had been to the Federal Court
many times to successfully enforce its copyright and trade
Instead, Henley Constructions “ramped up” its marketing
and promotion of the name, and Henley Arch commenced legal
ASIC registration gives no
protection to a brand name
Certainly until the Cease and Desist letter, it was harsh
to say the use of “Henley Constructions” was ‘tainted by
dishonesty’ from the start, when it was a lack of good legal
advice that led it to believe that ASIC registration was
enough to give it rights to use the name.
Even today, on the ASIC name search website, the only
warning given is that: “You can't register a company name
that is similar or identical to a name that is already
There is no warning on the ASIC website that registration
of a name does not confer a right to use and there is no
link to the business.gov.au/registrations web page which
contains a good explanation of the protection a trade mark
What should a business do
to protect its name?
There are three forms of protection every business should
use to protect its name and logos:
- Register a company name with ASIC – the name should
be chosen carefully to be distinctive (not geographical)
and not identical to or similar to the name of any other
business in the same field.
- Register a domain name as a .com.au, and if
available as a .com as well.
- Register a Trade Mark to cover the goods and
Register variations of the name – in this case, Henley
Arch had not registered ‘Henley Constructions’, even though
it could have done so before 2006.
The recommended searches before settling on a name (search
the whole and each part) are:
- ASIC business and company name
- trade mark searches
- internet searches (that is, Google searches)
- searches of any websites arising from internet URLs
compromising the name
- domain name searches of the “Whois database” for
“.com.au” domain names
- searches of the Yellow Pages and White Pages
directories for any listings