By Jürgen Bebber & Andrew Sykes
Trade mark protection has always been an essential part of any thorough marketing strategy. The emergence of ecommerce has seen many transactions that were traditionally made face-to-face or by correspondence now occurring over the internet. Furthermore, consumers are expecting to find product and service information on websites. In such an environment, the registration of domain names has increasingly become essential as an additional consideration in marketing strategies.
However, it is important to note that the registration of a domain name does not create a right in the name. Neither does the registration of a business name or a company name. Domain names are merely addresses chosen to attract consumers to a particular website. The primary purpose for the registration of business names is consumer protection. Companies on the other hand are registered primarily to create a legal entity separate from the person or persons involved in conducting the business. All states and territories require persons conducting businesses with reference to a name other than their own to register business names so that consumers are able to identify the ‘face behind the name’.
Trade mark registrations, on the other hand, create rights in the name. Registered trade marks have two main functions, namely providing protection against potential infringers and protecting the trade mark owner against allegations of infringement. Any sign that is used to denote origin of a product or a service may be registered as a trade mark, including words, symbols, letters, numbers, labels, sounds, scents, shapes, colours, aspects of packaging or a combination thereof.
It is not necessary to register a trade mark in order to be able to use it. It is also not necessary to register a trade mark in order to act against potential infringers. A user of an unregistered trade mark may be able to proceed against a potential infringer with the assistance of consumer protection laws and the law of passing off. However, such causes of action require evidence to prove ownership of and reputation in the mark, the provision of which may be costly and time consuming. In contrast, the owner of a registered trade mark need only refer to the existence of the trade mark registration in order to show ownership of and rights in the mark. Of course, each alleged act of infringement must be examined on its merits as many defences are available in an infringement action. It is therefore important to seek professional advice.
A trade mark may not be available for registration, for example because of similar marks already on the Trade Marks Register. Accordingly, a successful marketing strategy will at the outset include trade mark clearance searches. Such searches not only determine whether a mark may be registered but also, importantly, determine the likelihood of use of the mark infringing any registered trade mark rights of others. If the preferred trade mark is available for use and registration, the next step is to file an application for registration of that trade mark.
Registered trade marks also become relevant in domain name disputes, for example where a third party has registered a domain name containing your trade mark. Such domain names may be challenged if you are able to show that the domain name is confusingly similar to a trade mark in which you have rights, that the third party has no rights or legitimate interests in the domain name and that the third party registered and is using the domain name in bad faith. The requirements for challenging a domain name registration may differ depending on the type of domain name. Of course, it will be more cost effective to avoid the scenario of a domain name dispute altogether by registering your trade mark as domain names in the domain name spaces most important to your business.
In view of the benefits in formally protecting your brand, considerations surrounding trade mark and domain name registration should be included at the outset of a successful marketing strategy. Griffith Hack is ideally placed to assist you at any stage of your brand development, protection and enforcement.
For more information visit www.griffithhack.com.au
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