Domain names and business branding: New changes

The ongoing importance of brand

The success of any business is closely tied to having a recognisable brand that distinguishes its goods and services from competitors, and to create a reputation in the market that customers identify with that business. Brand loyalty is precious and worth protecting, particularly in the digital age where trade and commerce is increasingly conducted online.

How to protect your brand at law

Protecting and disseminating your brand can be effectively undertaken by use of all of the following methods:

• Registering your brand as a trade mark with IP Australia – This is the most legally robust form of protection and will give you as owner, the exclusive right to use your trade mark for 10 years (which may be further extended) to distinguish your goods and services from competitors in Australia. It is also possible to obtain trade mark protection in countries outside of Australia should you conduct business offshore. The cost of obtaining protection is relatively low.
• Registration of a business name and company name which includes your brand name.
• Obtaining a domain name incorporating your brand name, which allows for the dissemination of your brand via the internet.

Caution – only a trade mark gives total legal protection

Although important for creating reputation and goodwill, obtaining a business name, company name or domain name will not on their own, give you any enforceable intellectual property rights.  This can only be done by obtaining a registered trade mark, which is in effect a monopoly granted to the owner by statute to use the trade mark in connection with the goods and services over which it is registered.

A business name is simply a name used in relation to a business and recorded on the Business Names Register operated by ASIC.  Businesses must display their business name in places where they are open to the public, such as on their shopfront.

A company name only serves to identify your company from other companies, and if your company name is the same or similar to an existing registered trade mark held by another person, you will be at risk of trade mark infringement.

Domain names – important rule changes

It is commonly believed that when a person obtains a domain name, they own that domain name and can freely sell or give others the right to use it.  Unfortunately, that is wrong.  The domain name is owned by the authorised domain name registry who grants to a successful applicant, a licence to use the domain name for a set period of time, usually between 1 and 5 years.  Licences are granted on a first come, first served basis. Where there are competing applications for a licence with the same domain name, it will be granted to the first applicant to complete and submit the application with the registry.  A licence does not confer any proprietary interest in the domain name.

Under the .au Domain Administration Rules: Licensing, a person applying for a licence must have an Australian presence and satisfy any eligibility and allocation criteria for the namespace being applied for.  There are 17 ways to establish an Australian presence under those rules.  For instance, the domain name applicant  can supply evidence that they:

1. are an Australian citizen or an Australian permanent resident visa holder;
2. are a company registered under the Corporations Act 2001(Cth);
3. have an Australian Business Number;
4. are a partnership under Australian law where at least one of the partners is an Australian citizen or permanent resident visa holders or an Australian body corporate;
5. have a trust, where the trustee is an Australian citizen or the trustee is an Australian body corporate; or
6. have applied for or own an Australian trade mark.

New rule for com.au or net.au domain names 

If an applicant wishes to rely on having an Australian trade mark to establish an Australian presence, then forthcoming changes to the .au Domain Administration Rules will require that the domain name exactly matches the words which are the subject of the trade mark.  This method is often used by foreign business entities to meet the eligibility criteria for com.au or net.au domain names. For example, if your trade mark was “Cornwalls Law and More”, you could have:

• cornwallslawandmore.com.au
• cornwallslawmore.net.au

But not:

• cornwalls.com.au
• lawandmore.net.au
• cornwallslaw.com.au

This rule change came into effect on 12 April 2021.

Steps you can take

If you have relied on your trade mark to establish an Australian presence and your domain name is not an exact match of the words in your trade mark, you will be ineligible to hold that com.au or net.au domain.  To remain eligible for your domain name, you should:

1. change the basis on which you meet the Australian presence requirement; or
2. transfer the domain name to a new person or entity that meets the Australian presence requirement. The transferee of the name must enter into a new licence agreement and pay the applicable licence fee. Any remaining time in the original licence period will not transfer to the new registrant.

Queries

If you have any questions about this article, please get in touch with the author or any member of our Intellectual Property team.

Disclaimer

This information and contents of this publication, current as at the date of publication, is general in nature to offer assistance to Cornwalls’ clients, prospective clients and stakeholders and is for reference purposes only.  It does not constitute legal or financial advice.  If you are concerned about any topic covered, we recommend that you seek your own specific legal and financial advice before taking any action.