International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Ltd

International Hair Cosmetics Group Pty Ltd (IHC) sought injunctive relief against International Hair Cosmetics Ltd (IHC Ltd) for the alleged breach of an undertaking given to the Court. IHC claimed that IHC Ltd had breached the terms of an undertaking by continuing to use the marks AFFINAGE, INFINITI, AFFINAGE INFINITI, and AFFINAGE SALON PROFESSIONAL in connection with hair care products in Australia. IHC sought a permanent injunction against IHC Ltd from using these marks and other relief in relation to a British website that appeared to target Australian consumers.

The legal issues before the Court included the interpretation of the undertaking given by IHC Ltd, the application of Order 35 Rule 11 of the Federal Court Rules, and whether the display of the trade marks on a British website constituted use in Australia. The Court had to determine whether the failure to fulfil the terms of the undertaking made it obligatory to make an order under the Federal Court Rules and whether the trade marks displayed on a British website were directed at Australian consumers.

The Court found that the undertaking was a result of negotiations and a deed of settlement, and therefore it had to be construed taking into account the context of the surrounding circumstances. The Court held that there was no obligation to make an order under Order 35 Rule 11 of the Federal Court Rules, as the rule must be considered in light of the discretionary nature of the source of the power. However, the Court found that the display of the trade marks on a British website constituted use in Australia, as the website targeted towards Australia, and had a drop-down box with Australia as a choice.

The Court made an order that IHC Ltd be permanently restrained from using the marks in question in connection with hair care products in Australia, and that they remove any reference to Australia from the British website. IHC Ltd was also ordered to pay IHC's costs of and incidental to the notice of motion, to be taxed if not agreed.