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
What do you do? How could you have prevented this
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
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
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
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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