Australia: Online Trade Mark Infringement - whether trade marks displayed on a UK website constitute use in Australia

Last Updated: 17 November 2011
Article by Martin O'Connor and Cate Sendall

In International Hair Cosmetic Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 (IHC Case), Justice Logan of the Federal Court held that the use of an Australian registered trade mark on the website which was operated by a United Kingdom-based business, constituted use of the trade mark in Australia.

This result means, in certain circumstances, trade mark owners in Australia can potentially enforce their rights against the proprietor of an overseas website where their Australian mark has been used without permission.


International Hair Cosmetics Group Pty Ltd (IHC Aust), an Australian company, is the owner of the registered Australian trade marks AFFINAGE and AFFINAGE INFINITY. International Hair Cosmetics Limited (IHC UK), a company incorporated in the United Kingdom, is the owner of the trade mark AFFINAGE, which had been registered in the United Kingdom and several other countries.

IHC Aust was established in 1992 as a corporate vehicle for the distribution of products bearing the AFFINAGE mark in Australia. It was initially owned jointly by Mr Bailey and Mr and Mrs Jolly. In 2002 Mr and Mrs Jolly acquired Mr Bailey's interest in the company. The acquisition included an agreement between the parties to split geographically the distribution of AFFINAGE marked products. IHC Aust was allocated distribution rights across China, Australia, New Zealand, South-East Asia and the Western Pacific, with Mr Bailey's company, IHC UK, retaining the balance of worldwide distribution rights.

After this agreement had been reached, the second respondent, Affinage Salon Professional Pty Ltd (Salon), was incorporated to sell products using the marks A.S.P. and KITOKO. IHC UK held 35% of the shares in Salon.

Disputes arose between IHC Aust and IHC UK in 2010 concerning the parties' use of various of the AFFINAGE trade marks. As a result, the parties entered into a deed of settlement. Under the deed, IHC UK and Salon undertook not to use AFFINAGE, INFINITY, AFFINAGE INFINITY or AFFINAGE SALON PROFESSIONAL as a sign in connection with the importation, marketing, sale or manufacture in Australia of hair care products including hair colours and dyes (the Undertaking).

IHC UK breaches the Undertaking

As a result of  a Google search of the word 'Affinage', in January 2011 ICH Aust's solicitor discovered a web page entitled 'Affinage Salon Professional' at On the website's landing page, 'Affinage' appeared as a banner in large font with 'Salon Professional' in subscript. The landing page also included a 'country box', with the statement 'Select Australia for information on Australasia and Asian Pacific countries.' When consumers selected "Australia" on the drop down menu in the country box, they were led to a page headed 'ASP'. The ASP page contained a 'Profile' tab which included the following statement:

In 1996 [ICH UK] conceived, created and launched the premium hair care brand AFFINAGE. Originated as a line of hair colour, the AFFINAGE brand grew rapidly to include [various other products] ... Now we are introducing our exciting new hair care brand, ASP, to the Australian and Asian markets. Having already signed distribution agreements with a number of companies we look forward to fantastic success in 2011.

The ASP page also included a heading 'World Class, Wordwide' [sic] along with a statement that "our products are sold in over 50 countries - across Europe, Africa... and the Asia Pacific. Our brands are marketed globally by [IHC UK] and through its associated companies in the USA and Australia."

A world map at the bottom of the page indicated that the United Kingdom was the worldwide headquarters  of ASP with Australia designated as 'ASP Australia'.

Consumers were unable to purchase goods over the website, which was purely for the purpose of corporate information and marketing.

IHC Aust commenced proceedings seeking orders restraining IHC UK and Salon from breaching the Undertaking.

The Decision

Justice Logan held that IHC UK and Salon had breached the Undertaking. An injunction was granted which required IHC UK and Salon to substantially alter the website. In reaching this conclusion, Justice Logan divided his reasoning into two issues:

  1. whether the use of the marks on the website was use 'in Australia'; and
  2. whether the marks had been 'used as signs'.
  3. Whether the use of the marks on the website was use 'in Australia'

Justice Logan considered that use of IHC Aust's marks on the overseas website constituted 'use in Australia'. Justice Logan drew an analogy between the concept of 'use in Australia' in the Undertaking and the meaning of 'use in Australia' in trade mark infringement cases. He emphasised the following statement of Justice Merkel in Ward Group Pty Ltd v Brodie & Stone plc (2005) 143 FCR 479 (Ward Group Case):

The use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not use by a website proprietor of the mark in each jurisdiction where the mark is downloaded. However, ... if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded. 1

Australian internet users could easily download the marks and the presence of the 'Australia' option in the drop down box plainly indicated that the website was targeted at Australians.2

Whether the marks had been 'used as signs'

Justice Logan considered that when the parties included the phrase 'use as a sign' in the Undertaking, they contemplated that phrase having the same meaning as 'use as a trade mark' in Australian trade mark law.3 As the website was patently a means of marketing ICH UK's and Salon's products,4 Justice Logan found that the use of the AFFINAGE marks on the website did constitute use as a trade mark.

In their defence, IHC UK and Salon argued that the marks were not being used in Australia as trade marks, but rather as a reference to the history of the Affinage brand, which ICH UK originally created. However, the problem with the 'historical use' argument was that ICH UK and Salon failed to make it clear that the current commercial origin in Australia of AFFINAGE-branded goods was neither IHC UK nor Salon.5 Having failed to emphasise that it was purely an historical use, IHC UK and Salon were still using the brand as a sign in Australia in connection with marketing, in breach of the Undertaking.6

It is also important that, after proceedings had been commenced, amendments were made by IHC UK and Salon to the website. 'Australia' had been removed from the drop down box for AFFINAGE. However, this was not enough to avoid breaching the Undertaking. The website still targeted Australian consumers by way of a fixed, albeit discrete, link on the global landing page.7 Furthermore, the global landing page did not say that IHC UK had no connection with the AFFINAGE brand in Australia.8 Instead, the page suggested that there was an AFFINAGE world brand which is known as ASP in Australia.9 AFFINAGE was still being used in breach of the Undertaking on the website, despite modification.

Where to from here?

The decision draws attention to the difficulties the Internet presents when two or more parties are entitled to use the same trade marks in different jurisdictions. Parties to distribution agreements, for example, should ensure that their agreements expressly deal with the use of any relevant trade marks online. Agreements should also provide for ongoing monitoring of online use of the relevant marks.

Australian trade mark owners should also be aware that unauthorised use of their marks on an overseas website may now constitute use of the mark in Australia, for the purposes of enforcing their rights as registered owners. It will be necessary to show that the overseas website is directed or targeted at Australian consumers by way of a 'drop down' country box or some other more discrete fixed link.

Australian companies and website proprietors should also be mindful of potential difficulties in using marks online in a manner that suggests that their products or services are targeted at foreign markets or consumers in jurisdictions in which they do not have marketing or distribution rights.

The assistance of Alec Bombell, Clerk, of Addisons in the preparation of this article is noted and greatly appreciated.


1 Ward Group Case at [40]-[41].

2 IHC Case at  [60].

3 ICH Case at [61].

4 ICH Case at [63].

5 ICH Case at [67].

6 ICH Case at [66].

7 IHC Case at [70]

8 IHC Case at [70].

9 IHC Case at [70]

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Cate Sendall
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions