Hemmes Trading Pty Limited v Establishment 203 Pty Ltd

Hemmes Trading Pty Limited succeeded in the Federal Court against Establishment 203 Pty Ltd over the use of ESTABLISHMENT 203 for a Brisbane restaurant. Hemmes Trading owned the registered trade mark ESTABLISHMENT for services including restaurant, bar and hotel services and had used that brand since September 2000 for its Sydney venue.

The court declared that the respondent’s use of ESTABLISHMENT 203 in relation to restaurant services infringed the registered mark and contravened ss 18 and 29 of the Australian Consumer Law. The respondent’s cross-claim to cancel the ESTABLISHMENT mark was dismissed. The court permanently restrained the respondent, from 30 days after the orders, from using ESTABLISHMENT 203 and any substantially identical mark in relation to restaurant, café, bar, hotel or function services, and ordered the respondent to pay costs.

This was a hospitality branding dispute between two very different businesses. On one side was Hemmes Trading, part of the Merivale group, which operates more than 80 restaurants, bars, pubs, hotels and function spaces in Australia. It owned the registered word mark ESTABLISHMENT and had used that name since September 2000 for a large multi-level restaurant, bar and hotel business at 252 George Street, Sydney.

The judgment describes that Sydney venue as a major operation from the start. Its launch coincided with the Sydney Olympic Games. The court referred to evidence of very heavy patronage, queues, large venue capacity, external signage, staff uniforms and branded materials such as menus, coasters, pens, matches and business cards. The extract also records widespread newspaper coverage from Sydney and interstate publications using “Establishment” as the proper name of the venue. That mattered because the applicant relied on this use to show that ESTABLISHMENT functioned as a brand, not just as an ordinary descriptive word.

On the other side was Establishment 203 Pty Ltd, which opened a restaurant in Fortitude Valley, Brisbane in November 2023 under the name ESTABLISHMENT 203. The respondent was part of the Stanbroke group, a family-owned Queensland beef business. Its operations included cattle stations, a feedlot, a distribution business, two butcher shops and an abattoir at Grantham.

The number 203 was central to the respondent’s explanation for its branding. The abattoir had been given establishment number 203 by the Australian Government in about 1997 under the system for certified abattoirs, and that number appeared on meat products and export health certificates. So this was not a case where the number was simply invented to decorate the name. The respondent had a real commercial connection to it. Even so, the dispute remained whether using ESTABLISHMENT 203 for restaurant services unlawfully stepped on the applicant’s rights in ESTABLISHMENT.

Hemmes Trading brought claims for trade mark infringement and for contraventions of ss 18 and 29 of the Australian Consumer Law. A passing off claim was ultimately not pressed. The respondent did not just defend the claim. It also filed a cross-claim seeking cancellation of the ESTABLISHMENT trade mark under s 88(2)(a) of the Trade Marks Act on two grounds. First, it argued that the mark was not capable of distinguishing the applicant’s services at the priority date. Second, it argued that the applicant was not the owner of the mark at the priority date.

That meant the court had to deal with both validity and infringement. In practical terms, the respondent was trying to knock out the earlier registration and, if that failed, avoid liability for using ESTABLISHMENT 203. The extract also shows that the court had to consider deceptive similarity, the good faith use of own name defence under s 122(1)(a), ACL representations about commercial connection, and whether additional damages should be awarded.

The first issue was whether ESTABLISHMENT was a valid registered trade mark for the relevant hospitality services. That was not a trivial point because “establishment” is an ordinary English word. The extract records that the respondent relied on dictionary definitions showing that its ordinary meaning is relevantly a business or place of business. The respondent also pointed to examples of other businesses using “establishment” in hospitality names before and after the priority date, and to media use of the word in a general sense.

The court therefore had to consider whether the mark was capable of distinguishing the applicant’s services at the priority date under the version of s 41 then in force, and whether the applicant was the owner of the mark at that date. The extract notes that the mark application was filed on 23 May 2001 and that the mark had been used since September 2000, initially by a related entity, Justin John Enterprises Pty Ltd, before assignment to the applicant in July 2009.

The second issue was infringement. The court had to decide whether ESTABLISHMENT 203 was deceptively similar to ESTABLISHMENT when used for restaurant services. Although the available text does not reproduce the full detailed reasoning on that point, the orders and declarations make clear that the court answered that question in the applicant’s favour.

The third issue was whether the respondent could rely on the defence of good faith use of its own name under s 122(1)(a). The extract specifically identifies two factual matters in that discussion: the respondent did not conduct trade mark searches or ask the company’s lawyers for advice when choosing the name, and it later received a letter of demand from the applicant. Those facts were relevant to whether the respondent acted in good faith.

The fourth issue was consumer law. The court had to decide whether the respondent’s conduct contravened ss 18 and 29(1)(g) and (h) of the ACL by representing that its services were commercially related to the applicant’s ESTABLISHMENT business. In hospitality markets, that kind of issue can arise through venue names, signage, social media, booking platforms, media coverage and word-of-mouth references, especially where the earlier venue already has a reputation.

Finally, the court had to consider relief, including whether additional damages should be awarded. The extract states that additional damages were not awarded, even though the respondent proceeded in the face of a letter of demand.

Hemmes Trading won on the main issues. The court declared that the respondent had, by using ESTABLISHMENT 203 in relation to restaurant services, infringed Australian registered trade mark number 876753 for the word ESTABLISHMENT pursuant to s 120 of the Trade Marks Act. The court also declared that the respondent had contravened ss 18 and 29 of the Australian Consumer Law.

The respondent’s cross-claim was dismissed. So the court rejected the attempt to cancel the ESTABLISHMENT registration on the grounds identified in the extract. That is important because the respondent had attacked the mark at its foundation, arguing that the word was too ordinary or insufficiently distinctive and that the applicant was not the owner at the priority date.

On distinctiveness, the extract gives useful guidance. The court accepted that “establishment” has an ordinary meaning relevantly referring to a business or place of business. It also accepted that there had been some third-party use of the word in hospitality. But the court still held that ESTABLISHMENT was at least to some extent inherently adapted to distinguish when presented in isolation as a proper noun naming a restaurant, bar or hotel. The court also accepted that the applicant’s use and intended use supported registration. The extract specifically notes that mainstream media quickly used ESTABLISHMENT alone to identify and distinguish the applicant’s venue, which supported the conclusion that the mark functioned as a brand.

The extract does not reproduce the full reasoning on every issue, but the result is clear. The court was satisfied that the registration stood, that ESTABLISHMENT 203 infringed it, and that the same conduct also crossed the line under the ACL.

As to relief, the court permanently restrained the respondent, from 30 days after the date of the orders, from using ESTABLISHMENT 203 and any other mark substantially identical to it in relation to any restaurant, café, bar, hotel or function services. The respondent was ordered to pay the applicant’s costs of the proceedings, including the cross-claim. The proceedings were also listed for case management on 11 October 2024 in relation to remaining questions for determination.

The extract further states that additional damages were not awarded. Because the available text does not set out the full detailed reasoning on that point, the safest reading is simply that the court considered the issue and declined to make that award on the material before it.

The first practical point is that a common word can still be a strong trade mark in context. Many business owners assume that if a word appears in the dictionary, it must be weak or free for everyone to use. This case shows that the position is more nuanced. A word may have an ordinary meaning and still function as a badge of origin for particular services, especially where it has been used prominently and consistently and has become known in the market as the name of a specific venue or business.

That matters in hospitality because venue names often use ordinary words that sound stylish or memorable. A restaurant, bar or hotel operator should not stop at asking whether the word is descriptive in a general sense. The real question is whether someone else already has enforceable rights in that word for the same or closely related services, and whether your proposed use would create a conflicting commercial impression.

The second point is that adding a number may not solve the problem. ESTABLISHMENT 203 was not enough to avoid liability here. Even though the number had a genuine connection to the respondent’s beef business, the court still found infringement and ACL contraventions. Businesses often try to differentiate a risky name by adding a suburb, street number, year, family number or product code. Sometimes that helps, but sometimes it does not. If the dominant element still points consumers toward an existing brand, the risk remains.

The third point is that internal authenticity is not the same as legal clearance. The respondent’s connection to “203” was real. But trade mark law and the ACL focus on market-facing use and consumer impression, not just on whether the business had an honest internal reason for the choice. A name can be meaningful to you and still be unlawful to use in the market.

The fourth point is process. The extract notes that the respondent did not conduct trade mark searches or ask the company’s lawyers for advice when choosing the name. For a business owner, that is a strong reminder that naming should be treated as a legal and commercial workstream, not just a branding exercise. Before launch, you should usually check:

The fifth point is that the risk is not limited to trade mark infringement. The court also found contraventions of ss 18 and 29 of the ACL. That means a naming dispute can become a broader misleading conduct case if the branding suggests affiliation, sponsorship or some other commercial relationship that does not exist. In hospitality, where customers often choose venues quickly based on names, online listings and reputation, that risk can be very real.

For franchisors, distributors and multi-site operators, the consequences can multiply quickly. A problematic venue name can spread across leases, fit-outs, franchise documents, supplier arrangements, uniforms, packaging, booking systems and local marketing. Rebranding after launch is usually far more expensive than clearing the name at the start.

The trade mark application for ESTABLISHMENT was filed on 23 May 2001, with use dating from September 2000. The respondent’s Brisbane restaurant opened in November 2023. The Federal Court hearing took place from 3 to 5 September 2024, with last submissions dated 11 September 2024. Judgment and orders were delivered on 20 September 2024.

The orders included a permanent restraint commencing 30 days after 20 September 2024, dismissal of the cross-claim, and a costs order against the respondent. The proceedings were listed for case management on 11 October 2024 in relation to remaining questions for determination.

This page explains Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100 using the published Federal Court judgment record and extract. The available material clearly identifies the parties, the commercial setting, the issues argued, the declarations and orders, and part of the court’s reasoning on distinctiveness and use.

Some detailed reasoning is not fully reproduced in the available text. In particular, the finer analysis on deceptive similarity, the own-name defence and the refusal of additional damages is not fully set out here. Readers should treat this as a practical case explainer based on the published judgment material rather than a substitute for the full reasons.