Protecting domain names and trade marks
Domain name or trade mark?
The advantages of a domain name when compared to a registered trade mark appear to include:
- You are not restricted to a particular class of goods and services whereas a trade mark is limited to the class of goods and services for which it is registered;
- Registration of a domain name is low cost, expedient and informal in contrast to trade marks;
- Registration of the domain name prevents the registration of identical domains, this may effectively give a monopoly right to the owner of the domain;
- Notwithstanding that a domain name is a mere licence, they are often seen as property in sales and purchases of businesses;
- Domain names may be hot linked. For example, the domain for Singapore ‘.sg’ may be hot linked to the Australian domain ‘.au’;
- Where there is no existing trade mark in existence, the registration of a domain name may commence the acquisition by the registrant of a common law trade mark, that is, one that has not been registered.
Disadvantages of a domain name include:
- Registration is limited to only two years compared to 10 years for a trade mark;
- Domain names provide no or little protection against an action for passing off, misleading or deceptive conduct under the Trade Practices Act or an infringement of a prior trade mark;
- Where there is an existing trade mark whether registered or unregistered under the Trade Marks Act, the registration of a domain name may infringe the existing trade mark;
- A registered trade mark is a statutory right compared to a mere licence, which is at best a contractual right regarding the registering authority. For example, on its website Google claims a registered trade mark and has not relied solely on a domain name to protect its goodwill.
A word of caution
The laws granting a statutory right to the owner of a trade mark differ between countries. Although gradually becoming more harmonised under the influence of such international treaties as the Trademark Law Treaty, the Trade Related Aspects of Intellectual Property Rights, the Madrid Protocol and various free trade agreements, the legal right to protection of a trade mark ultimately depends on the laws of each country.
In many countries, such as Australia, the first to ‘use’ a trade mark is recognised as the owner, while in other countries, such as China, the first to register is recognised as the owner of the trade mark. For this reason it is unsafe to assume that a strategy of registering a domain name alone will provide a platform to claim a prior right to the use of the name.
Ultimately, registration of a trade mark in target countries is the preferred strategy to adopt for serious players in the world of international trade.
—James Millea is a senior associate at Argyle Lawyers
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