Australia: Dominant on-line presence, but exclusive right to use the name?

Last Updated: 13 May 2016
Article by Jacqui Rigby-King

At great expense in developing your website, you have built up a successful on-line presence and your business is growing.  Just when you think things are going so well, a competitor appears on the internet and they have almost the same domain name as you and are selling products similar to yours at a fraction of the price. 

What do you do?  How could you have prevented this happening?

One of the misconceptions that business owners have is that on registration of a company, business or domain name, they have the exclusive right to use of that name.  Unfortunately, this is not the case!  Only the registration of a trade mark can afford a business that type of monopoly in the use of a brand name. 

This is because not only are other people able to secure a domain name with a different suffix or a company or business name with some variation, no proprietary rights in the name are acquired on the registration of a company, business or domain name.

In order to secure the exclusive use of such a name, you need to register that name as a "word" or "words" trade mark. 

This statement has to be qualified by the knowledge that the company, business or domain name needs to have some distinctiveness about it and not be generic or descriptive of the goods and services for which it is being registered.  For example, the domain name "landscapesupplies.com.au" for a business involved in the retail sale of garden and landscaping materials or "cityflowers.com.au" for a business located in the city selling flowers, are not going to be capable of registration as a trade mark as of right. 

There is a rider to this in that if the trader has a continuous use for a number of years of that name or names to brand their business or products and they have cogent evidence of a longstanding and substantial goodwill and reputation in that name, they may be in a position to register that Common Law trade mark.  The Trade Marks Act 1995 allows an exception to the general rule in these circumstances.

If you have a successful business that is using the internet to maximise the sales of your products and you do not have a registered trade mark for the words comprised in your domain name, sooner or later, you are likely to have a competitor who trades off your registered domain name diverting sales from you. 

It is common practice for unscrupulous competitors to import products manufactured for a fraction of the price and sell them on-line using a substantially similar domain name.  Even if you have a registered trade mark for the logo under which the products are branded, take the further step to register your word only trade mark.

This will not stop the competitor from taking advantage of the situation but it may help you to stop the competitor from continuing to affect your business.  Once you have a registered trade mark of that domain name, you are in a better position to threaten legal action and you may also be able to approach the domain name registry to remove the offending domain name registration because the name is being unlawfully used by the competitor.

This publication does not deal with every important topic or change in law and is not intended to be relied upon as a substitute for legal or other advice that may be relevant to the reader's specific circumstances. If you have found this publication of interest and would like to know more or wish to obtain legal advice relevant to your circumstances please contact one of the named individuals listed.

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Jacqui Rigby-King
 
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