4. Australian Use

The trade mark must be used in the course of trade in Australia. However, that does not mean that all activities connected with the trade must have taken place in Australia.

4.1  Goods sold or offered for sale but not present in Australia

In the Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199, it was held that a trade mark is used in Australia if the goods are offered for sale in Australia but at the time they are offered for sale are actually only in transit to Australia. It should also be noted that McGarvie J in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 401 was prepared to infer that, in the absence of any indication that any consignment of goods shipped from Italy to Australia did not arrive, that the consignments reached the consignees.

However, in W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182, where cigarettes were purchased and paid for in America and sent direct to consumers in Australia there was said to be no use of the mark in Australia as all “trade” in the goods took place in the United States. Trading ended once goods were purchased or otherwise acquired for consumption, that is, the course of trade had ended outside Australia.

4.2  Services provided outside Australia

In Carnival Cruise Lines Inc. v Sitmar Cruises Ltd. AIPC 91-049 Gummow J, in the Federal Court, found that although the actual services of carrying out cruises did not take place in Australia, “...crucial integers in the course of trade took place in Australia...” Trade commenced with ‘steps taken to encourage enquiries from prospective customers’ in Australia.

4.3  Advertising in foreign publications

Advertising in foreign publications available in Australia will generally not constitute use ‘in the course of trade’ in Australia unless there appears to be specific targeting of Australian customers. In Knickerbox Ltd v Pedita Australia Pty Ltd (1995) 31 IPR 108 at 117, the delegate held:

Apart from the indication that the goods illustrated in these advertisements originate from the opponent’s company, or are available at one of its retail outlets, no information has been made available as to how and where a person in Australia might order the goods, nor what the price of the goods, including their transport, might be in the local currency. I do not think these advertisements can be interpreted as offers for the purpose of soliciting trade in an article of clothing that will be supplied on order.

…

I must concur with Mr Cowin’s submissions that, given the use of British currency and in the absence of the opponent company’s branches in Australia, the advertisements could not be seen to be directed to the Australian consumers, nor intended for the Australian subscribers of the magazines.

4.4  Use of a trade mark on the internet

A trade mark used on a website will not be used in Australia unless that website specifically targets Australian consumers. In Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471 at 43, Merkel J held:

…use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.
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4.5  Inadvertent use

An owner may be able to establish use of the trade mark in Australia even if they had no knowledge of that use. In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 at 51, a majority of the High Court held:

The capacity of a trade mark to distinguish a registered owner's goods from those of others, as required by s 17, does not depend on whether the owner knowingly projects the goods into the Australian market. It depends on the goods being in the course of trade in Australia. Each occasion of trade in Australia, whilst goods sold under the trade mark remain in the course of trade, is a use for the purposes of the Trade Marks Act. A registered owner who has registered a trade mark under the provisions of the Trade Marks Act can be taken, in general terms, to have an intention to use that trade mark on goods in Australia. It is a commonplace of contemporary international trade that prior to consumption goods may be in the course of trade across national boundaries.

4.6  Goods produced for export

If a trade mark is applied in Australia in relation to goods and/or services to be exported from Australia the application of the trade mark to the goods or in relation to the goods or services constitutes use of the trade mark for the purposes of the Act (subsection 228(1)). Similarly if any act is done in Australia to export goods and/or services which, if done in relation to goods and/or services in Australia it would constitute use of a trade mark, then that act is use of the trade mark for the purposes of the Act.

See Deckers Outdoor Corporation v Luda Productions Pty Ltd (2006) ATMO 74.

The equivalent of current section 228 was section 117 in the Trade Marks Act 1955. This referred only to goods. For this reason subsection 228(2) of the Act includes a retrospective provision: if the actions set out in paragraph 1.8 above have been done in relation to services prior to 1 January 1996, then they will be taken to be use of the trade mark for the purposes of the current Act. Exceptions to this provision will be cases where a court has made a decision or an appeal has been determined from a court decision before 1 January 1996 - those decisions will stand despite the provisions of subsection 228(2).