Registering your business’ trade marks protects elements of your branding such as logos, images and fonts. In addition to these brand features, many modern businesses have brand names which are also internet domain names. However, including domain names in trade mark applications can create issues as you apply for registration. Often, trade marks containing domain names will require extra steps for verification by the national intellectual property regulator, IP Australia. This article sets out the benefits and process of registering trade marks containing internet domain names.

Internet Domain Names as Trade Marks

It may benefit your online business to use your internet domain name as your operating business name. For example, this shows customers the origins of your goods or services and where to find you online. However, while your domain name is unique to your business and brand, this alone will not protect your business. Therefore, when you are setting up your internet domain, you should also be preparing to register it as a trade mark.

Overall, a trade mark gives you exclusive rights to use your business name or logo in your industry. Trade mark registration also allows you to take action to stop others using similar trade marks within your industry. A trade mark is also a badge of origin, providing consumers an assurance of quality about your good or service. This is the case even for websites.

There are many popular and recognisable trade marks that include internet domain names. For example, a search of IP Australia’s trade mark registry shows there are registered domain name trade marks for:

  • realestate.com.au;
  • AMAZON.COM; and
  • lastminute.com.

General Rule

Generally, after you apply for a trade mark containing an internet domain name, the trade mark examiner will cross check the applicant with the domain name owner (the authorised user). This is the case whether you are attempting to register a full domain or just a subdomain.

The internet domain name may be owned by someone other than the trade mark applicant, such as where an agent or employee operates the domain on behalf of the company who owns the brand name. If the applicant does not also own the domain, IP Australia will reject the trade mark because the trade mark may cause confusion among consumers.

A subdomain refers to a domain which is part of a larger domain. For example, your domain may be ‘yourbusiness.com’ whereas the subdomain could be ‘yourbusiness.inbox.com’.

You should register trade marks for all the domains and subdomains which you believe require protection. For example, a single business may protect the various domains and subdomains under their brand, such as:

  • www.retail.com;
  • www.retail.com.au;
  • retail.net;
  • retail.com/find_it_here; and
  • http://www.retail.net.au/.

Strategies for Registering Your Trade Mark

IP Australia will reject your application to register domain names as trade marks if you do not satisy their requirements. Consequently, if you intend to register a trade mark containing an internet domain name, you have three options:

1. Identical Owners Ensure the person who applies for trade mark registration also owns the domain name.
2. Provide Evidence of Authorisation

If your application is rejected, you will receive an examination report from your trade mark examiner. This report will specify the reasons for rejecting your trade mark. If this rejection stems from the domain name owner and the applicant being different people, you must prove to IP Australia you have the authority to use the domain name.

You can prove your authority over the brand by obtaining a letter of consent from the person owning the domain name. To complete registration, you must notify your IP Australia examiner that you have obtained consent.

3. Transfer the Domain Alternatively, if your application is rejected, you may transfer ownership of the domain to the trade mark applicant. After completing the transfer, you should then notify your IP Australia examiner to finalise your trade mark registration.  

 

Once your trade mark becomes registered, you may officially begin branding and marketing your business under the domain name. You will also be entitled to take action against people who copy your registered business branding.

Key Takeaways

Registering your business’ trade marks is crucial for your brand protection strategy. However, your registration process will require extra steps if you are aiming to register a domain name. Consequently, you will likely benefit from ensuring that the trade mark applicant and domain owner are the same person.

If you need assistance protecting your business’ online branding or would like to discuss registering domain names as trade marks, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Sophie Glover
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