Trade Mark vs. Website Domain: Who Wins?

You are the Owner of the Trade Mark, “ABC”. However, one day, you discover that a Website has the URL, www.abc.com.au. Does the Website Domain Name Infringe Your Trade Mark?

Does the Website Domain Name Infringe Your Trade Mark?

In Australian Trade Mark Law, s 120(1) of the Trade Marks Act 1955 (Cth) provides that a Trade Mark is infringed if the ‘sign’ is ‘substantially identical with, or deceptively similar to’ the Trade Mark. This ‘sign’ includes Domain Names. However, the ‘sign’ must be used in relation to the Trade Mark’s goods and services. Otherwise, there is no Trade Mark infringement.

For example, the Trade Mark, “ABC”, is registered for education services. www.abc.com.au also offers education services. The Trade Mark and the URL are the same. And, they both provide the same services. Therefore, the Registrant of the URL is likely to have infringed the Trade Mark.

Alternatively, if the Trade Mark and Website Domain Name provide different goods and services, the Trade Mark Owner can still sue under s 18 of the Australian Consumer Law for ‘misleading and deceptive conduct’. Further, in Common Law, the Trade Mark Owner can sue for Passing Off as long as the Trade Mark has reputation, the Website Domain Name misrepresented your Trade Mark, and you, as the Trade Mark Owner, incurred damage.

What Can You Do?

As the Trade Mark Owner of a Registered, Australian Trade Mark, your protection extends to all .au website domain names. You can complain to the .au Domain Administration Ltd (auDA), the policy authority and industry self-regulatory statutory body, who will take action to either:

  1. Cancel the Website Domain Name; or
  2. Transfer the Website Domain Name from the Registrant to the Trade Mark Owner.

However, this excludes .com, .net, or .org email extensions. You must be the Trade Mark Owner of a Registered, International Trade Mark, in order to have your protection extend to these Website Domain Names. For example, the WIPO Madrid Protocol is a convenient, efficient system to register your International Trade Marks. Then, you can complain to the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) who can provide similar remedies.

What Can We Do For You?

It seems safe to say that between the Trade Mark Owner and the Website Domain Name Registrant, it is the Trade Mark Owner who wins. However, this is only if the Trade Mark is filed, or even better, registered in Australia and Internationally. Our IP Consultants are experts in the field of Trade Marks, working in Australia and with WIPO, to file and register your Trade Marks. Whether you are worried about an existing Website Domain Name, or wish to prevent Registrants from using your Trade Mark, or want to save that Website Domain Name for yourself, our IP Consultants can give you the advice that you need.