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Law firm’s reputation falls short in trademark dispute
The supposed reputation of a law firm with offices across Australia was not enough to support it in a trademark fight with a smaller firm.
Naomi Neilson
Hamilton Mott, a construction firm based in Sydney, won a trademark dispute against international firm Hamilton Locke when the latter failed to establish that its reputation was a sufficient opposition.
Under section 60, the registration of a trademark can be opposed if another trademark acquired a reputation in Australia before the registration and, because of that reputation, “the use of the first-mentioned trademark would be likely to deceive or cause confusion”.
“I firstly note that while there is a general statement that the opponent has 1,700 clients, there is no indication of the turnover services offered by the opponent,” Goldsworthy noted in his judgment.
“I add that the newspaper articles in evidence do not suggest there is a reputation in Hamilton Locke and merely report on staff changes.
“Whilst there does appear to have been operations since 2018, it is difficult for me to ascertain, or even estimate, the extent of the activities regarding Hamilton Locke before the relevant date.”
Hamilton Locke also objected to the trademark application on the ground that it was an “identical etc. trademarks”, being that it is either substantially identical or provides services that are “closely related”.
Jock Hamilton, the sole director and principal lawyer of Hamilton Mott, said the name of the firm was a “combination of Hamilton’s own surname and the surname of his grandmother”.
He submitted that it is “common” for law firms to carry this formula for their trading names, adding: “The reputation of a legal practice is more dependent on the reputation of its principal(s) and practitioners rather than an abstract brand, which explains the historical tradition of law firms using the surnames of their founding partners.”
While both use the name “Hamilton”, Goldsworthy said the impact of this is not “determinative” of the trademark’s impression.
“There is some level of similarity aurally in that each of the trademarks commences with the word ‘Hamilton’ and is combined with another apparent surname. Further, the second surname in each trademark is double-syllabic and the middle portion of the word would be pronounced as ‘oh’,” Goldsworthy said.
“However, the commencing and terminating letters in the second surname of each trademark presents as, and results in, a distinct impression. I do not, for example, consider the slurring of words here to be a real risk such that consumers would likely be caused to wonder whether the services originate from the same trader.”
The case is Hamilton Locke Pty Ltd v Hamilton & Co Legal Pty Ltd [2024] ATMO 236 (29 November 2024).
Naomi Neilson
Naomi Neilson is a senior journalist with a focus on court reporting for Lawyers Weekly.
You can email Naomi at:
