In the recent decision of Christian v Nestlé (No 2) regarding the above marks, the Full Federal Court considered the circumstances in which it would be appropriate to cancel an infringer’s domain name in a trade mark infringement action.
Nestlé (owner of the MUSASHI mark) had appealed the lower court’s order not to cancel the infringer’s a-sashi.com.au domain name. The lower court had made a less restrictive order – requiring the infringer to amend the domain name registration so that it doesn’t resolve to a website where the registered goods were sold.
The Full Court upheld the appeal and ordered cancellation of the domain name. Firstly, the Court was satisfied that it had the power to order cancellation of a domain name as part of an injunction. Secondly, the Court was satisfied the power should be exercised where an infringer has used the domain name to infringe otherwise it would retain an instrument to infringe.