SociéTé Des Produits Nestlé SA v Christian (No.12)

Société Des Produits Nestlé SA (Nestlé) sought to enforce its registered trade mark rights against Christian, who was operating a website accessible in Australia. The dispute concerned whether Christian's online activities, specifically the promotion and offering for sale of goods outside Australia by reference to a trade mark that would infringe Nestlé's registered mark if used in Australia, constituted a breach of previous injunctive orders made by the Court.

The central legal issues before the Court were twofold. Firstly, the Court had to determine whether the previous injunctive orders were capable of being complied with in the circumstances presented. Secondly, the Court was required to consider the scope of injunctive relief in relation to trade mark infringement, specifically whether a person could infringe a registered trade mark by promoting or offering for sale goods outside Australia via a website accessible to persons in Australia, by reference to a trade mark that would otherwise constitute infringement if used in connection with the supply of goods or services within Australia.

Justice Manousaridis reasoned that the previous orders were intended to prevent the use of the infringing trade mark in a manner that would cause confusion or damage to Nestlé's reputation, regardless of the physical location of the goods being offered. The Court applied the principle that injunctive relief can extend to conduct that, while not directly occurring within Australia, has a real and substantial connection to Australia and is likely to cause harm to the Australian trade mark owner. The Court found that the promotion of goods on a website accessible to Australian consumers, even if those goods were located overseas, could constitute a contravention of the Trade Marks Act 1995 (Cth) and the existing injunctive orders.