Under s 20 of the Australian Trade Marks Act 1995 (Cth):
“(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the trade mark is registered.”
That is, a trade mark grants exclusive rights. This is what protects your brand.
Under the .au Domain Administration Rules: Licensing, in order to register a .au domain name, the applicant must provide evidence that it satisfies the “Australian Presence” requirement. The rules state that “the applicant or owner of an Australian Trade Mark can rely upon that application or registration to establish an Australian presence, but only in respect of a domain name that is an exact match of the words which are the subject of the Australian Trade Mark application or registration”. That is, a trade mark application or registration can provide a basis for owning a domain name.
If a third party registers and uses a domain name that comprises a person’s registered trade mark, the person may make an auDRP or UDRP complaint to recover that domain name from the third party.
So, in this way, trade marks trump domain names. They provide a basis for owning a domain name, and they provide a basis for taking one away.
And trade marks trump business names as well. ASIC says, on its website: “Registering a business name that is someone else’s registered trademark may lead to legal problems. You should check your proposed business name does not use trademarked words or expressions before you register it with ASIC.” (See: Business names vs trademarks | ASIC).
So, trade mark, domain name or business name…what actually protects your brand? Trade marks. You need to register your trade mark. After you have done this, the next most important is the domain name. Having a domain name that matches your trade mark is a valuable asset for any business. Third, the business name. Nothing much turns on this. Aligning your business name to your trade mark and domain name is just a ‘nice to have’.
Many businesses get this all wrong. They register a business name, and think they have done everything they need to do to protect their brand. Unfortunately, that tends to result in a very steep learning curve, via the crash course that ensues upon becoming the recipient of a trade mark infringement allegation.
If you have not yet registered your trade mark, and you need help doing so, contact Tarr Law today.
