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BRIEF BACKGROUND
The Ward Group is the Australian manufacturer and distributor of anti-greying hair creams and lotions marketed under the brand name RESTORIA. It owns the trade mark in Australia and in over 70 other countries. However, rights to use of the mark in the United Kingdom had been assigned around 1970 and are currently owned by Brodie & Stone.
The products of Brodie & Stone were advertised on the internet at various sites including:
1. A site with an online catalogue advertising RESTORIA product with an accompanying price in British Pounds and US$, and having a drop down country box with a list of shipping destinations that included Australia.
2. An online catalogue listing the price in British Pounds, Euros, US$ and AU$.
The products were ordered in the manner typically used for online purchases. Certain confirmations were received and certain branded goods delivered.
The only goods proved to have been purchased from the websites were goods obtained from purchases by the Ward Group’s solicitors.
Passing Off
It was found that the Ward Group had not established any actual or probable damage and therefore could not succeed in its claim for passing off.
Although obiter in light of the finding concerning the lack of actual or probable damage, it was also stated that while a representation generally made may amount to a misrepresentation in Australia it would need to be targeted at Australian consumers. In the present case it was found that there was no targeted representation.
TRADE MARK INFRINGEMENT
It was found that advertising the products on the internet generally was not an infringement of the Australian registration because the Australian market was not being specifically targeted, notwithstanding a drop-down shipping menu that allowed Australia to be selected, or a figure in AU$ on one of the catalogues.
There was a potentially infringing use of the trade mark when the orders were confirmed and the product delivered to Australia. However, although product was delivered to Australia, it was found that this was not an infringing use because it had been consented to by the trade mark owner.
Crucial to this finding was the fact that no other purchases had been proved, that there was no infringement by the general offering for sale and that there would have been no infringement if not for the actions of the Ward Group’s solicitors. Consequently, it was found that there was “an implicit, if not an explicit, consent to the infringing use”.
WHERE DOES THE USE OCCUR
An issue raised by this form of purchase, which remains undecided and was not considered in the decision, concerns the purchase of goods overseas for individuals in Australia who do not intend to trade in the goods in Australia.
In circumstances where such goods were not being actively promoted or marketed for sale in Australia, there is authority to the effect that the purchase of those goods overseas constitutes a trading transaction in the other country but not trade in Australia. While the facts differ a little from the present case, following that line of reasoning the purchase of product overseas via the internet for personal use may not have amounted to trade mark infringement.
The decision in the present case suggests that use of the mark in relation to the supply of products to the Australian consumer would, if purchased by someone other than the Ward Group’s solicitors, have been an infringing use, even though the sites were not targeting the Australian market. However, it was not necessary for the court to determine that issue in light of its other findings and so this was not conclusively decided.
JOINT LIABILITY
Brodie & Stone were not selling the goods themselves via the internet. Distributors of their product were selling them.
The Ward Group sought to have Brodie & Stone found liable on the basis that they were joint tortfeasors and therefore responsible for the actions of their distributors because they had been notified by the Ward Group of the actions of those distributors.
While the distributors were found not liable in any event, Brodie & Stone were also found not to be joint tortfeasors because they were not acting in concert or pursuant to a common design to commit a tort and did not knowingly or otherwise equip, or intend to equip, any purchaser from it with, “an instrument” or “badge” of fraud or deception. This will at least be of some comfort to manufacturers and suppliers of product and is a reasonable and sensible conclusion.
CONCLUSION
Internet advertisers can take some comfort from the decision in terms of their global advertising of product and the risk that such use will infringe rights in Australia. However, the question of when sales into Australia will be an infringement remains undecided and there is still potential liability for such sales.
The decision will not be of comfort to foreign trade mark owners who seek to maintain the validity of their registrations simply by having their brands appear on their website, or even being offered for sale on their website without specifically targeting the Australian market. If the intent is to maintain the validity of an Australian registration, the site should specifically invite Australian consumers to interact and trade with the owner via the website.
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