Société Des Produits Nestlé SA & Ors v Christian (No.12)  FCCA 2875 (9 December 2014)
This was a procedural matter arising from the decision by Judge Manousaridis reported on 3 September 2014 finding infringement of Nestle’s MUSASHI trade mark by use of the trade mark A-SASHI.
His Honour originally made an order requiring that “by 10 September 2014 the first respondent take down from the websites to which the domain name www.a-sashi.com and the domain name www.a-sashi.com.au resolve, and take down from the Facebook account at www.facebook.com/a.sashivitamins, any content which displays the sign “A-SASHI” and either of the First A-SASHI Device Mark and the Second A-SASHI Device Mark.”
That order was subsequently replaced by three separate orders, one of which was that “By 31 October 2014 the first respondent restrict the countries in which the website to which the domain name www.a-sashi.com resolves can be viewed to block the site from IP addresses in Australia.”
The respondent, Mr Christian, applied for a stay of this order because it was not technically feasible for him to comply with it. He asserted that Shopify, the ecommerce platform using for hosting his online store, did not permit blocking of IP addresses in Australia. However, Nestle filed evidence showing how this could be done. Judge Manousaridis accepted Nestle’s evidence and found it was feasible for Mr Christion to comply with the order.
Mr Christian also sought to set aside this order because it was too broad. He had adjusted the website settings to make it clear that shipping of orders was only provided within the USA and his Honour needed to consider whether operation of the website in this manner would still infringe Nestle’s Australian MUSASHI trade mark registrations. If not, then the order would be broader than necessary. His honour considered that “displaying a mark on a website accessible by persons in Australia in relation to goods or services that are not available for sale or supply in Australia does not constitute a use of that mark in Australia. It does not constitute the use in Australia of the mark “in respect of “vendible articles”. It cannot, therefore, constitute an infringement of a trade mark registered under the Act.” Consequently, to the extent this order prevents Mr Christian from operating the website in such a manner, it goes beyond that which is necessary to prevent him infringing the MUSASHI trade marks and needed to be amended as follows:
The respondent by himself, or by his employees or agents, is restrained from operating or using the website to which the domain name www.a-sashi.com resolves (Website) to promote, supply, sell, or otherwise deal with supplements and therapeutic products under or by reference to the A-SASHI Word Mark or the First A-SASHI Device Mark or the Second A-SASHI Device Mark (as these terms are defined in the orders made on 3 September 2014) (A-SASHI marks) unless:
(a) the Website is set to block the sale or supply into Australia of goods or services in relation to which any one of the A-SASHI marks is used; and
(b) the Website is set to cause the checkout page on the Website to state that goods in relation to which any one of the A-SASHI marks is used are shipped only within the United States of America or some other place other than Australia; and
(c) the Website contains no reference to Australia including any address in Australia.
Judge Manousaridis also considered it was appropriate to amend the earlier order restraining Mr Christian from “importing into, and selling, offering for sale or promoting supplements and therapeutic products in Australia, under or by reference to the A-SASHI Word Mark or the First A-SASHI Device Mark or the Second A-SASHI Device Mark” by adding the words “for sale” after the word “promoting” to make it clear that the promotional activities that Mr Christian is restrained from engaging in relates to the sale in Australia of his A-SASHI branded goods.