A trade mark is any sign used on goods or services as a badge of origin. The mark can be a combination of words, pictures, colours, shapes and sounds. Domain names are alphanumeric signs allocated to represent a sequence of numbers that identify computers or servers on the internet. An accredited domain name registrar must first assign your domain name, effectively granting you a license to use a particular domain name in relation to an internet protocol address.

Consumers can use domain names to identify the source of products and services, and as such can function as trade marks. If you are involved in e-commerce or operate an online business, obtaining a trade mark registration for your name can be an essential strategy to protect your brand, and promote its goods and services. Below, we set out three key differences between domain names and trade marks.

Registrability

The process to obtain a trade mark registration for a domain name is the same as registering a trade mark for any other sign. The requirements are similar except that to prevent consumer confusion and deception, you can only register your domain name if you can prove that you are the authorised user of the domain name.

1. Domain Names Don’t Give You an Exclusive Right

A domain name allocation does not grant you an exclusive right to use the domain name’s essential element. For example, if you have been allocated the domain name ‘cottoncandy.com.au’, you can’t stop somebody from using the trade mark ‘cottoncandy.net’ on similar goods or services under the Trade Marks Act 1995 without a trade mark registration. Although you may have recourse through other legal claims including passing off or under the Australian Consumer Law, it’s typically easier to rely on and prove infringement of trade mark laws. 

2. A Domain Name is Not Intellectual Property

A domain name allocation is not the same as a trade mark registration in that it is not considered intellectual property in the same way as a registered trade mark. You don’t receive proprietary rights to a domain name but acquire instead a license to use the domain name. So, if someone with a greater right to your domain name comes along, you can potentially loose your rights.

3. Trade Mark Registration Can Help Prove Your Right to Use the Domain Name in a Dispute

If you find yourself in the middle of a dispute, registering your trade mark can assist you in proving your right to use the domain name. A domain name dispute arises when one party wants to stop another party from using a domain name, or when somebody wants a registered domain name transferred from the current registered user to themselves.

There are several things that a successful party needs to prove in a domain name dispute. During these instances, a trade mark registration either for the domain name or the essential word elements can help you prove that you are legitimately entitled to use and keep your domain name. If you are defending your right to use the domain name or seeking to have somebody transfer the name to you, you are the complainant in the dispute. 

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Questions about registering your domain name as a trade mark? Ask our trade mark lawyers.

Raya Barcelon

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