Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4)  FCA 138 (24 February 2016)
Successful action by Harcourts to defend its trademark registration for Roy Weston and restrain use of this name and trademark by Roy Weston Nominees (RWN).
The name ‘Roy Weston’ has a lengthy history dating from 1957 in the Western Australian real estate industry.
In January 2004, Harcourts acquired rights to the Roy Weston business originally established by Mr Roy Weston. It obtained a trade mark registration for Roy Weston covering real estate affairs dating from 29 July 2002.
RWN was originally a franchisee of the Roy Weston business and asserted rights in the ROY WESTON trade mark through its acquisition of one of the Roy Weston franchised real estate agencies which had been operating since January 1988.
In March 2006, Harcourts informed its franchisees that it intended to re-brand its franchise network from ROY WESTON to HARCOURTS and the re-brand took effect from 2 April 2007.
Harcourts made several demands that RWN refrain from all use of ROY WESTON but these demands were resisted by RWN which continued to conduct its real estate business under this name and brand.
RWN obtained trade mark registrations of ROY WESTON NOMINEES THE TRUSTED NAME IN REAL ESTATE and ROY WESTON REAL ESTATE dating from 9 January 2007 and 10 December 2009 respectively which were achieved under the honest concurrent use and/or prior continuous use provisions.
On 22 July 2011, RWN filed an application for removal of Harcourts’ Roy Weston trademark registration alleging non use during the three year period ending on 22 June 2011. This application was referred by the Registrar of Trade Marks to the Federal Court after Harcourts commenced these Federal Court proceedings on 6 September 2012.
McKerracher J found that Harcourts was the true owner of the ROY WESTON trade mark and RWN’s conduct amounted to infringement, misleading or deceptive conduct and passing off. RWN’s counterclaim for invalidity of Harcourts’ registration for the Roy Weston trade mark failed.
The re-branding by Harcourts constituted a repudiation of the franchise agreement, but nothing really turned on that or whether this repudiation was accepted by RWN so as to put an end to that agreement because the intellectual property obligations survived termination.
RWN’s non use removal application failed. His Honour accepted Harcourts’ evidence of dual branding for about one year and found that Harcourts had used the ROY WESTON trade mark during the relevant non use period through a banner advertisement hosted on the website at www.royweston.com.au and through use of the royweston.com.au domain name to redirect viewers to their primary website at www.harcourts.com.au . His Honour also found relevant trade mark use of ROY WESTON through a White Pages telephone directory listing which redirected consumers to the Harcourts listing. However, use of ROY WESTON on a medal as the name of an award was not trade mark use in the course of trade. Further, in the event he was wrong in finding relevant trade mark use, his Honour would have exercised discretion in favour of Harcourts and allowed the Roy Weston trade mark to remain on the Register.
The trade mark registrations obtained by RWN were found to be invalid because Harcourts was and remained the true owner of the ROY WESTON trade mark. RWN’s registrations were contrary to law (being in breach of the franchise agreement) and based on certain representations to the Registrar that were false in material particulars.