Online service providers and third party trademark infringement: an Australian perspective

Abstract

Today’s technology has enabled internet intermediaries to greatly expand their access, storing and linking functions and provide highly advanced interactive online services. As such, these intermediaries are more fittingly described as Online Service Providers (OSPs). This transformation has enabled businesses to utilize novel techniques in reaching relevant online consumers, while at the same time providing those consumers with relevant information and an increased freedom of choice. In the midst of these technological advancements, trademark owners have often sought to hold OSPs accountable for third party trademark infringement resulting from the infringing conduct of their users. Yet, in the Australian context, the doctrinal requirement that a trademark must be used ‘as a trademark’ and the wide section 123 defence available in the Trade Marks Act 1995 (Cth) that exempts those who deal with goods on which trademarks have been placed with the trademark owner’s consent, gives rise to difficulty in extending the scope and application of the Trade Marks Act 1995 (Cth) to OSPs. The lack of any provision in the Trade Marks Act 1995 (Cth) dealing with indirect trademark infringement adds to the problem. In the circumstances, reliance has to be placed on common law principles to extend the application of the Trade Marks Act 1995 (Cth) to OSPs. Yet, the exact parameters of such an extension remain uncertain.