Collins House Pty Ltd v Golden Age Sunrise Development Pty Ltd  FCA 724 (17 July 2015)
Unsuccessful application by Collins House seeking an interlocutory injunction restraining Golden Age from using Collins House and Collins House Melbourne in relation to the marketing of a residential property development at 466 Collins Street, Melbourne. The development is a 57 level residential tower with 271 lots and a market value of approximately $200 million. Many contracts for purchase had already been entered into and it was anticipated all remaining lots will be sold in the next 6 months. Once all lots in the development have been sold, there will be no further marketing of lots using the trade marks Collins House Melbourne and Collins House.
A company related to Collins House owned a trade mark registration for COLLINS HOUSE dating from 13 September 2010 covering “Accounting services and advice; tax advice, preparation of tax returns; business management and advice; management consultancy services; employment agency services including recruitment” in class 35, “Financial services and advice; financial planning; financial risk management; monetary affairs; insurance services and advice” in class 36, “Consultancy and advice in the field of information technology” in class 42, and “Legal services and advice” in class 45.
Collins House and its predecessor have been using COLLINS HOUSE as, or part of, various business names and trade marks since 1999 in relation to accounting services, financial and business management and advisory services and legal services.
Mortimer J was not satisfied Collins House had made out a prima facie case (serious question to be tried) on the trade mark infringement claim due to the differences in the respective services. This was also relevant under the consumer law and passing off claims where his Honour was also not satisfied Golden Age had falsely represented some sponsorship, endorsement or affiliation with Collins House. At best, there may have been some fleeting misapprehension or confusion which could be easily displaced by any reasonable consideration of the material available about the property development.
The balance of convenience also did not favour of the grant of an injunction because of the level of financial and reputational harm which would be suffered by Golden Age. To change the entire branding of such a large property development, mid-stream, would be a considerably expensive undertaking with obvious adverse reputational effects. Damages are an adequate remedy to Collins House if their claims are successful at final trial.