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  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
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
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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