In its recent decision in International Hair Cosmetics Group Pty UK v International Hair Cosmetics Limited  FCA 339, the Federal Court unravelled a tangled mess of a hair dispute between two companies with competing claims over a series of trade marks including AFFINAGE. The Applicant (IHC Aust) was the owner of trade marks for AFFINAGE and AFFINAGE INFINITY. The first Respondent (IHC UK) was the owner of the AFFINAGE trade mark in the UK.
Following an earlier dispute, IHC UK and the other respondents undertook to the court not to use the AFFINAGE marks in Australia on hair care products. However, IHC UK continued to maintain their website at affinage.com. This website contained a number of uses of word “affinage”, including on banner and describing the company. It also contained a country box where interested parties from Australia could visit to find further information about the products sold by IHC UK.
IHC Aust then filed a Notice of Motion pursuant to Order 35 Rule 11 of the Federal Court Rules which allows a court to order the enforcement of a undertaking given to the Federal Court. The Court found that:
- the website was accessible from Australia;
- the website was clearly targeted at Australia;
- the manner in which it was used on the website (on a banner indicating that AFFINAGE was one of the world’s fastest growing haircare companies using cutting edge technology to produce market leading hair products) was use as a trade mark, even though no product was sold by the company on the website.
As such the judge agreed with the orders sought by IHC Aust to enforce the earlier undertakings provided to the court by IHC UK.