Clash of jurisdictions and trade mark infringement

The case of International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 (Case) considered whether use of Australian registered trade marks on a British website constituted “use in Australia” under section 120 of the Trade Marks Act 1995 (Cth) (TMA).  It was ultimately held that, despite use of the two (2) trade marks on a British website, where the Respondents registered trade marks in various European countries infringement was established in Australia because the marks were “directed” at Australian consumers.  This article discusses Logan J’s reasoning and considers how trade mark infringement can occur across jurisdictions when two (2) parties have similar registrations in different countries.

Interjurisdictional trade mark law

The Free Trade Agreement between Australia and the United Kingdom (Australia-UK FTA) refers to and encourages the “implementation of multilateral intellectual property agreements”, including those administered under the World Intellectual Property Organization (WIPO).^[1]  WIPO’s Paris Convention for the Protection of Industrial Property (1883) (Paris Convention) establishes that trade mark rights will be independent across jurisdictions.  Irrespective of where the trade mark originates, it must be registered in the jurisdiction where it is used.

Section 120 of the TMA establishes what constitutes trade mark infringement, stating:

“A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered”.^[2]

[Bold is our emphasis]

Background to the infringement of the Australian registered trade marks

International Hair Cosmetics Group Pty Ltd ACN 057 921 945 (Applicant) owned two (2) Australian registered trade marks being “Affinage” and “Affinage Infiniti”, where International Hair Cosmetics Limited (Respondent) owned several registered trade marks in the United Kingdom.^[3]  This case also sought orders seeking compliance with undertakings provided to the Court, however this article only considers the international infringement issue.  The Respondent owned the mark “AFFINAGE” in the United Kingdom and twenty (20) other countries in Europe, with pending applications in other countries in various continents.^[4] 

The Applicant, however, had operated business in Australia, leading the word “AFFINAGE” to be associated with hair care products, registering “AFFINAGE INFINITI” as a trade mark in Australia in 2007.^[5] In January 2011, the Applicant came across the Respondent’s website after searching “Affinage” and discovered that this website was both relevant to hair care and had a box whereby Australia could be selected as a country.^[6]  The Applicant determined it was clear from the website that the Respondent was planning to move its United Kingdom-based hair care brand into the Australian market.^[7]

In response to this discovery, the Applicant filed a notice of motion to restrain the Respondent from using the marks “AFFINAGE”, “INFINITI”, “AFFINAGE INFINITI”, or “AFFINAGE SALON PROFESSIONAL” in relation to the sale or manufacture of hair care products in Australia.^[8]

Legal issue of use in Australia

The primary question for the Court to determine was whether the Respondent’s trade marks were directed at Australian consumers and therefore whether this was sufficient to establish the “use” element under section 120 of the TMA.  More specifically, it had to be determined whether there was a use of the nominated words as a “sign“, marketed specifically to Australia.^[9]

Decision

It was held that trade marks displayed on the website constituted use in Australia because they were specifically directed at Australian consumers.

Logan J cited the case of Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471, which acts as authority for the proposition that where evidence suggesting use was intended to be directed at a particular jurisdiction, then there is likely to be a use in that jurisdiction.^[10]

It was discussed that the internet “knows no such physical limits” and can be accessed across jurisdictions, meaning there will be a “use” of words in connection with Australia where the words are downloaded in Australia and targeted at Australians, as was specifically intended in this case.^[11]  Here, the “AFFINAGE” mark was readily accessible from Australia, through the internet, and was directed to Australian consumers in that the drop-down box provided Australia as an option to be selected on the global landing page.^[12]

Links and further references

Legislation

Trade Marks Act 1995 (Cth)

Cases

International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339

Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471

Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) [1963] HCA 66

Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471

Further information

If you need advice on trade mark protection or infringement matters, contact us for a confidential and obligation‑free discussion.

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances

---

[1] Australia-UK FTA chapter 15, article 15.15.

[2] Trade Marks Act 1995 (Cth) s 120.

[3] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [1]-[2].

[4] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [3].

[5] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [7].

[6] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [18]-[19].

[7] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [19].

[8] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [21].

[9] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [55].

[10] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [47]; Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 at [43].

[11] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [59]; Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 at [40]-[41].

[12] International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 at [60].

Related insights