It has always been important to register an Australian trade mark for each key brand used in your business, but now it’s even more important.
New rules relating to the registration and renewal of Australian domain names (i.e. domain names ending in .com.au, .net.au and .asn.au) will commence on 12 April 2021. These changes tighten the existing eligibility requirements for Australian domain names.
Businesses should now carefully review their Australian trade mark rights to ensure they can purchase and retain corresponding Australian domain names.
The new eligibility rules, in a nutshell
A person applying for an Australian domain name licence (whether a new domain name or a renewal of an existing domain name) must:
- have an Australian presence; and
- satisfy the eligibility and allocation criteria for the particular domain name – i.e. the domain name must match:
(a) the applicant’s business or entity name;
(b) an Australian registered trade mark owned or filed in the name of the applicant; or
(c) the name of the goods, services or activities provided by the applicant.
Why is this significant?
Previously, overseas entities, without any real physical connection to Australia, could simply register an Australian trade mark and then buy as many Australian domain names as they desired regardless of whether the domain name matched the Australian trade mark. All that was required was for the Australian domain name to have some connection to the entity’s trade mark, trading name, goods, services or activities.
For example, an overseas business who owns the single Australian registered trade mark for say, KENT LANYARDS, could register the following domain names, among others:
This is about to change.
An overseas entity wishing to rely on its Australian registered trade mark as a basis to purchase or renew an existing Australian domain name can only do so if the trade mark matches the corresponding Australian domain name.
As noted above, now is the time to check to ensure your business has the required registered trade mark rights to retain ownership of its key Australian domain names.
From 12 April 2021, businesses who seek to rely on an Australian trade mark as the sole basis to establish the Australian presence requirement will only be able to register a domain name with an exact match to their registered Australian trade mark (or application for registration).
Exact match means that the domain name must:
- be identical to include all of the words in the Australian registered trade mark; and
- include all of the words in the order in which they appear in the Australian registered trade mark.
Note: It is possible to exclude identifiers such as com.au, punctuation marks (e.g. exclamation points or apostrophe’s, articles such as ‘a’, ‘the’, ‘and’, ‘or’ & ‘of).
A warning for overseas businesses
Foreign companies should review their portfolio of Australian domain names to ensure they are secure once these new changes come into effect. Foreign companies, without physical connection to Australia, will be unable to renew or gain registration for domain names unless they are an exact match of an existing Australian trade mark. If your domain name becomes susceptible to cancellation it could be acquired by a competitor.
Although the foreign entity could investigate other means of establishing an Australian connection – e.g. registering and operating an Australian company – obtaining separate trade mark registrations for each corresponding domain name is likely to represent the most efficient and effective strategy for overseas companies to secure their brand and domain name assets in Australia.
Answers to your important questions
1. What if the domain name is a generic name that is not capable of registration as a trade mark?
A trade mark not capable of registration is unable to be relied upon to establish Australian presence. A foreign registrant will need to meet Australian presence another way.
2. Do unregistered (common law) trade mark rights count?
No, your proposed Australian domain name must be an exact match of an Australian trade mark registration (or application for registration).
3. Can my foreign business transfer the domain name to another entity which is more likely to meet the Australian presence requirement?
Yes, however, this kind of transfer should be made before 12 April 2021. After that date, a transfer of a domain name can only occur between two entities that are eligible to hold it.