[DNS] Domain Names and Trade Marks

[DNS] Domain Names and Trade Marks

From: Meliza Smith <melizasmith§hotmail.com>
Date: Wed, 07 Nov 2001 13:44:10 +1100
The following comes from a 'trade mark' angle ...
 
In answer to your question, Malcolm, any and all of them, provided they can prove that their trade mark registration has been infringed by the domain name, and that the domain name has been used as a trade mark.
 
Although generic words are registrable as trade marks, it is not an easy process. There is a mountain of TM/trade practices case law that covers this area. It would be very difficult to obtain registration of the trade mark LOGISTICS solus if it was used in respect of services that can be described as 'logistical services', ie, with no other more distinctive words/embellishments, or without providing evidence of a great deal of use of the trade mark in Australia and of the associated reputation.  
 
That said, Malcolm tells us there are 43 registered trade marks containing LOGISTICS. I assume there are none for the word LOGISTICS solus. Let's assume, for the sake of argument, that these businesses all provide transport-related services.
 
A person with the business name Phony Logistics somehow (presumably after generic .com.au domain names go 'live' later this year) obtains the domain name logistics.com.au and commences offering transportation services in Australia. This business does not have a trade mark registration and has no prior 'common law' reputation in the word LOGISTICS as a trade mark.
 
If any of the 43 trade mark owners can prove that (a) Phony Logistics is using the LOGISTICS.COM.AU domain name as a trade mark - that is, offering for sale goods and/or services under the LOGISTICS banner and not using it purely in a descriptive sense - then action can be brought under the Trade Marks Act 1995 for trade mark infringement. 
 
A trade mark is a sign to be used to identify the goods/services of one trader over the goods/services of another. Trade marks provide a statutory bar to the use/registration of a substantially identical/deceptively similar trade mark if such use/registration is likely to cause confusion or deception.
 
It is irrelevant what policies are 'flavour of the month' within the DNS. It also doesn't matter if a person's business/company name has been registered longer than a trade mark if it is only used as a business or company name. Business and company names do not confer rights in the business/company name in the same way that trade marks do.
 
If you have a trade mark registration that is being infringed by a 'substantially identical/deceptively similar' trade mark - be it a business name, company name, domain name, or common law mark - you may have grounds to bring an action under the Trade Marks Act. Just ask your friendly trade marks attorney or lawyer for advice!
 
I suppose this points out the dangers inherent in the Trade Marks Act 1995, in that you can now obtain registration of 'generic' trade mark if it can be shown through use and reputation, that the mark is distinctive of your goods/services. 
 
As pointed out in this forum, the Liberal Government has been very keen to sign any and all treaties, agreements etc to do with 'globalisation' of Australian IP - including the Madrid Protocol, which opens up a whole other can of worms in relation to the DNS.
 
I have read the ACCC's submission to the 2nd auDA consultation report & disagree with the statement that trade marks, if introduced as eligibility criteria, will necessarily result in 'rorting' of the trade marks system. As discussed above, it is often not easy to obtain a trade mark registration, especially if the trade mark is a 'generic' term. A trade mark registered merely to obtain a particular domain name could be challenged as the owner would not have the necessary 'bona fides'.  Additionally, the expense of obtaining a trade mark registration (even a self-filed one) is considerably larger than the $70 that a Vic business name costs you.
 
Meliza
 
PS) Any whispers as to when is the 'live' date for generic .com.au domain names may be, and what will the criteria for applicants will be?


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