There are many benefits to owning an Australian trade mark registration. For example, trade mark registrations are both a shield and a sword. They provide:
- a much easier means of preventing other businesses from using your brands because you won't have to prove that you have established a reputation in your brand to succeed; and
- a defence to trade mark infringement, even if another business owns a trade mark registration for the same trade mark and goods / services.
As a result, businesses should seek to obtain trade mark registrations for each brand used (or proposed to be used) in their business, where possible. Impending changes to the rules relating to .au domain names make this even more important – particularly for foreign businesses operating in Australia. And unlike many other domain name systems, there are strict rules as to who can obtain ".au" domain names.
A "match" trade mark will be required
For example, at present, ".com.au" and ".net.au" domain names must be an exact match, abbreviation or acronym of the applicant's name or trade mark, or otherwise be closely and substantially connected to the applicant. From 12 April 2021, these rules will become even stricter. Insofar as ".com.au" and ".net.au" domain names are concerned, it will no longer be possible to rely on the somewhat vague (and often misused) "close and substantial connection" rule. Unless one of the other criteria applies, domain names will only be registrable if the business has an Australian trade mark application or registration that is a match of the domain name. This means that the domain name must:
- be identical to one, some or all of the words or numbers used in the trade mark;
- use the words or numbers in the same order as they appear in the trade mark; and
- not include any additional words or numbers (other than things like punctuation marks).
As a result of this change, many domain names will be vulnerable to cancellation (and therefore be available to register by other businesses) after 12 April 2021. That is because the new rules will not only apply to any domain names registered after that date, but will also apply to existing domain names which are renewed after that date. Accordingly, businesses should carefully review their trade mark coverage to ensure they can retain the domain names they need.
Foreign businesses beware
Similarly, to obtain any ".au" domain name, businesses must satisfy the "Australian presence" requirement. Foreign businesses can do this merely by applying for a relevant Australian trade mark, which can be an easier and cheaper alternative to incorporating a local Australian company. Again, however, the new rules will require that trade mark to be an exact match of a relevant Australian trade mark application or registration. This will be even stricter than the "match" requirement described above. The domain name being applied for must:
- be identical to all of the words used in the trade mark; and
- include all the words in the order in which they appear in the trade mark.
As a result, it won't be possible just to file one Australian trade mark application and piggyback off that to register multiple .au domain names.
By way of example, consider a foreign company which sells smartphone apps named Widget Man and Widget Woman but only owns one trade mark registration for WIDGET MAN in Australia. Under the previous rules, the company would be able to register the following domain names:
- widgetman.com.au
- widgetmen.net.au
- widgetwoman.com.au
Under the new rules, separate trade mark applications would need to be filed for each of WIDGET MAN, WIDGET MEN and WIDGET WOMAN to be eligible for corresponding .au domains. These applications would not necessarily need to claim all the relevant goods and services that the business intends to offer (although it's always better for a specification to cover all of the goods and services for which the trade mark is used), as the rules focus on the trade mark applied for, rather than the goods / services claimed.
What if I don't get my domain name ducks in a row?
The key risk of failing to register desired trade marks and domain names is clear: someone else might get in first. The new .au rules don't eliminate that risk. A cyber-squatter could easily file an "exact match" Australian trade mark application for your brand – even for completely unrelated goods / services – and potentially be eligible for a corresponding .au domain name. Although there are ways to recover a domain from another registrant, these methods are more expensive and complicated than registering the necessary trade marks and domain names in the first place. In addition, it isn't always certain that you will successfully get the domain name transferred to you. Accordingly, businesses should consider the scope of their current trade mark and domain name protection as soon as possible. In light of the impending changes, now is the time to get your ducks in a row.