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The Internet and your Trade Mark - Protecting your business from overseas internet suppliers |
The Internet has drastically altered how goods are offered for sale. Consumers can now browse the online catalogues of suppliers located all over the world, and with the click of a button, order goods from London, Istanbul or Hong Kong and have them delivered to their door within 24 hours. |
In this new world, trade mark owners are presented with the significant challenge of protecting their intellectual property from infringement. What avenues of redress are available to the owner of a registered Australian trade mark when an overseas website advertises, say, the UK version of the product, bearing the registered trade mark, for sale to customers around the world including Australia? |
The Ward Group, an Australian manufacturer and distributor of anti-greying hair creams and lotions marketed under the brand name "Restoria", recently faced this problem when a number of UK websites offered the UK version of the Restoria product for sale via their online catalogues. |
The Ward Group was the registered proprietor of the mark "Restoria" in Australia and in over 70 other countries but not in the United Kingdom. In the UK, Brodie & Stone was the sole proprietor of the Restoria mark, owning the business previously carried on by the UK Ward Group. Brodie & Stone sold the UK Restoria products to retailers and wholesalers in the UK, who then on sold the product to the website operators. The UK Restoria product was similar to their Australian counterparts, with only slight differences such as packaging. |
The UK websites did not target or direct their advertising at Australian consumers. While Australia was listed in a country 'drop down box', together with a number of other countries, as a destination to which products may be shipped, and an Australian dollar price was quoted together with other currencies as an indicative conversion price, the website operators marketed their product to the world at large. |
In order for a website operator to be liable of trade mark infringement in Australia, the Federal Court held that:
- It is not enough that an image bearing the mark is uploaded onto a website outside Australia- the website operator would not be "using" the trade mark (within the meaning of the Trade Marks Act 1995) in each jurisdiction where it was downloaded. There must be more.
- If the website specifically targeted, or was directed at, Australia, it would likely be "use" in Australia when the mark was downloaded- constituting infringement.
- Where a website doesn't specifically target Australia, when it accepts to sell the overseas product to an Australian consumer, that conduct would be "use" of the mark- constituting infringement.
- However, use of the mark by the website operators as a result of 'trap purchases' made by, or on behalf of, the trade mark owner will generally not constitute infringement, if the trade mark owner cannot provide any evidence that other sales in Australia were made.
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| In the Ward Group case, the UK Restoria product was more expensive than the equivalent Australian product, and the Ward Group could provide no evidence, or reason why, Australian consumers would purchase the UK, rather than Australia, product. As such, the Court held that the Ward Group's trade mark was not infringed. |
If you are aware of Internet suppliers selling overseas goods in Australia bearing your registered trade mark, please contact us for a confidential discussion of your rights and available legal remedies. |
laura.thompson@cmlawyers.com.au
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