The world of Intellectual Property can be overwhelming and difficult to navigate. With so many facets to the rights you have as a brand and business owner knowing the difference between entities like trade marks and domains can be a great step towards protecting your IP.
According to the Queensland Government, a domain name is often the same, or similar to a trade mark, a business name, or company name, but these different registrations are to achieve different objectives:
- A domain name is registered so that there is an internet address.
- A trade mark is registered to identify a product or service.
- A business name is registered to identify a business that wishes to trade other than with its own name.
- A company name is the name of a specific type of legal entity.
"A common misconception is that a trade mark is the same thing as a business name, company name or domain name. It's not." – IP Australia
As we see above a trade mark is registered to identify a product or service. It's intended to demonstrate ownership and/or authorship. According to IP Australia, a trade mark can be used to set your business apart from the competition. Additionally, the owner of that specific trade mark can use that trade mark exclusively about the goods and/or services for which the trade mark is registered.
The Australian trade mark law is based on common-law that states that a brand needs to have built up a reputation in the region in which a company files its common-law trade mark. However, there are differences between registered trade marks and unregistered trade marks or common law.
Anyone can produce a trade mark around a business or brand without registering it. It's as easy as adding a TM (for trade mark) to your product labels, however, only registered trade marks can carry the symbol, the trade mark or service mark. It's not just a sign of registration but also of perceived respecting your trade mark and success of the brand.
The rights afforded to trade mark holders centre around the Trade Marks Act of 1995 which states that:
- If someone owns a trade mark, that trade mark and/or symbol of trade mark has the exclusive rights as befitting that trade mark as well as the ability to probit the rights of others to that trade mark.
- The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed. Intellectual property infringement is a common issue that many trade mark holders face but it requires evidence – usually in the form of timelines as well as reputation to prove ownership.
- The rights are taken to have accrued to the registered owner as from the date of registration of the trade mark.
- If the trade mark is registered subject to conditions or limitations, the rights of the registered owner are restricted by those conditions or limitations.
- If the trade mark is registered in the name of 2 or more persons as joint owners of the trade mark, the rights granted to those persons under this section are to be exercised by them as if they were the rights of a single person.
"A domain name is an internet address. Domain names let an internet user visit a specific website." – Business Queensland
You can't talk about domains without mentioning the Australian Domain Authority. It's a governing body that allows users to register their company domain name on a first-come-first serve basis. Often this name coincides with a trade mark (whether registered or unregistered) but the presence of a trade mark doesn't ensure protection of that name as a domain. In other words, though you may have a company name that is a registered trade mark you don't have the right to exclude other companies' use of that name as their domain.
If you find your registered trade mark is used as a licensed domain name you have the right to contest that usage via the auDA. A quick note, however; these rights are only afforded to.au licenses that are controlled by auDA. They have no bearing on .com or other international sites.
Domain best practices
- First come first serve: as with other internet domain licenses whoever gets it first has it.
- All is fair in love and domains: poetic it may be, no person or entity has more right to a domain name than any other person. Basically, if you have a claim to a domain name, someone with that same level of claim also can license that domain.
While this might seem to be a green light for people to register whatever they want – for instance, a competitor's brand name or trade mark there are a few other factors that discourage this.
The first is the .au mandatory terms and conditions which apply to all .au domain names. All .au domain name registrants warrant that they understand their "entitlement to register the domain name may be challenged by others who claim to have an entitlement to the domain name. The other factor is the Dispute Resolution Policy which gives brand owners and trade mark holders an avenue to protect their brands, services and trade marks from impersonation or misuse by third parties. " – auDA.
At the end of the day, the rights afforded to registered or unregistered trade mark holders as well as domain licensees can be boiled down to disputes. Whether through Section 41 of the Trade Marks Act 1995 or the Dispute Resolution Policy of the .auDA; an entity's ability to prove their entitlement to a domain or trade mark is their right.
If you have any questions about domain licenses or need advice about registering a trade mark contact our trade mark experts for more info.