4
May/05

When Will Overseas Internet Use Be Considered Trademark Use in Australia?


UK entity sold products under the RESTORIA mark.  Middlemen purchase the product and advertise it on the Internet on websites that by their language, target Australia (Evidence of which being a drop-down country menu which included Australia).  Australian owner of RESTORIA mark sues UK Restoria in Australia.  Plaintiff has no evidence of actual sales to Australia.

As the Australian IP blog, Weatherall’s Law, reports, the moral of the story is:

It will be possible to infringe a trade mark in Australia, by use on an overseas website, where communications of that website are targeted at Australians. But you are going to have to prove that Australians, other that people authorised or engaged by the trade mark owner, have received those representations. A tricky matter of evidence, potentially, but it is arguably not inappropriate to require something to be happening in Australia, on the other side of the world from where the webiste is launched, before lawsuits can happen here. To find otherwise would surely encourage a bit of easy forum shopping.

Comment from Freehills here.

Comment from Warwick Rothnie here.

Text of  Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471.


 

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