Australia: Online Trade Mark Infringement: When can the use of a trade mark on a global website infringe a trade mark owner’s rights in a particular country?
Intellectual Property Update

The use of a trade mark on a global website (such as a .com domain) can amount to use of a trade mark in Australia if it can be shown that such use on the website is directed or targeted at Australia. If the website proprietor has not been authorised to use the trade mark on the global website, this can amount to an infringement of the trade mark in Australia.

In the case of International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339, the Federal Court ruled in favour of an Australian hair care products company, International Hair Cosmetics Group Pty Ltd (IHC Aust), to stop the British company, International Hair Cosmetics Limited, from using its foreign-based website to suggest that it had a connection in Australia with the trade mark owned and used by IHC Aust in Australia.

The decision gives a degree of comfort to Australian trade mark owners who are concerned about the use of their brands on global websites by third parties. The case also provides some guidelines for traders as to how to avoid infringing third party rights when using a trade mark on a global website.

Guidelines for traders

• If a website is specifically directed or targeted to a particular country, then it may be found to infringe a trade mark owner's rights in that country if the mark is used on the website without authorisation from the trade mark owner.
• Parties that have entered into agreements or who plan to make acquisitions that allow for the use of the same trade marks by different parties, need to ensure that the use of the trade marks on websites is addressed in all agreements and that such use is continually monitored.
• The decision also works in reverse. An Australian company cannot use its website to suggest it services foreign markets and influence foreign customers if it does not have the rights, including trade mark rights, to market and distribute the featured products in those countries.
• The case emphasises the importance of protecting trade marks in Australia and the jurisdictions in which you intend to use the trade marks.

If you would like more information about registering your trade marks in Australia or overseas, please contact Alexia Marinos. Alexia is a Registered Trade Marks Attorney and Senior Associate who can assist you with all intellectual property matters.

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.