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Does registering a domain name with a domain name registrar give you trade marks rights?

The answer is no! That is because they are not the same. A registered domain name does not give you proprietary rights to the brand name. Only a trade mark can give you ownership of a brand name. Domain names may look similar to trade names but the former should not be mistaken for the latter. Let us have a look at each in order to differentiate a domain name from a trade mark.

Domain Names

A domain name is a sequence of letters, numbers or hyphens separated by one or more periods and act as a pointer to a unique numerical address (IP) on the Internet. Domains are simply the name that is assigned to the IP of your website. Domain names are much easier to use because people cannot memorise the long string of numbers that is your IP address. Your website name is therefore your domain name.

It is the reference or internet address that points to the server where your website is located. Internet users punch in your domain name to find your website. Computers use IP addresses to find and identify other computers in the Internet.

To build the brand of your business and establish customer recognition, it is essential for you to have a domain name that can be associated with your business. To illustrate, if the name of my guest accommodation business is Bread and Butter Bed and Breakfast then it would be a good choice for me to use breadandbutterbed.com.au as a domain name. This way, it will be easy for your customers to locate your business on the Internet!

Types of Domain Names

There are different types of domain names. The 2LDs are known as “open” domain names because the general public can use them subject to the relevant eligibility criteria. The different types of domain name are classified according to the d types of organisations they may refer to:

  • asn.au
    For incorporated associations, political parties, trade unions, sporting and special interest clubs.
  • com.au
    For commercial entities, such as companies and businesses.
  • net.au
    For commercial entities, such as companies and businesses.
  • id.au
    For individuals who are Australian citizens or residents.
  • org.au
    For charities and non-profit organisations.

Registered Domain Names

A domain name registration is not really that much about ownership as it is a lease. To use and maintain exclusive use of a domain name, you must pay for it and obtain registration. Domain names in Australia are allocated on a ‘first come, first served’ basis. Similar to leasing a car, as the registrant of a domain name, you are given a right over a specified period of time to use it provided you pay your domain name renewal fees.

As the registrant of the domain name, you are leasing the record of that name in the DNS servers for a period of time and you will have the control to tell the DNS servers to point to your address. This system is controlled by ICANN or the Internet Corporation for Assigned Names and Numbers. ICANN is a not-for-profit public benefit corporation that administers the domain name system or DNS and is headquartered in the Playa Vista neighborhood of Los Angeles, United States.

Trade Mark

A trade mark, on the other hand, is a sign that identifies the origin of a product or service in the market. It is a ‘badge or origin’ in the sense that it indicates a connection in the course of trade between goods or services and the person who uses the mark on those goods or in relation to those services.

Section 17 of the Trade Marks Act 1995 (Cth) (the ‘Act’) defines a trade mark as:

“A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by another person.”

A trade mark can be the form of a logo, a name, a slogan, or a diagram. A registered trade mark is a form of personal property. Rights in a trade mark are enforceable in the same way as rights in any other personal property. A registered trade mark enjoys the protection of the Act.

Benefits of a Trade Mark

  • Asset: It is an asset which can be bought, sold, assigned, and licensed (you have the exclusive right to authorise other people to use your trade mark for the goods or services in your registration).
  • Exclusive Right: A trade mark registration clarifies ownership and you obtain the exclusive right to use the trade mark and to obtain relief for infringement.
  • Deterrent: A trade mark sends a message to the Australian marketplace that a business takes its intellectual property seriously.
  • Defence: It provides a valuable defence to allegations of trade mark infringement.
  • Competitors: It can also deter competitors from using or trying to register the same or similar trade mark if they search the Australian Trade Marks Register and find the trade mark registration.
  • Prevent Others: The right to prevent others from using a substantially identical or deceptively similar mark.
  • Renewal: You can maintain the trade mark indefinitely through renewal.
  • Australia: Registration usually gives rights throughout Australia.
  • Importation: Importation of goods bearing infringing marks may be prevented by asking the Australian Customs Service to seize the offending goods.

A registered trade mark is protected under the Trade Marks Act 1995(Cth). You can register your trade mark if it is name or a slogan as long as it is available in the sense that another person does not have better or earlier rights to the mark.

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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