Register Trademarks
What is a trademark?
A Trademark is a distinguishable mark that attribute ownership and quality to products and services whilst business and personal names identify business and persons irrespective of their products and services. A trademark must be in use; simply registering a trademark does not entitle you to deny another of the right to use that trademark. You must publically show a clear connection between your trade mark and your goods.
A simple way to mark your name as a trademark is to put the letters TM next to your trademark. This tells other people that the product you are selling is under a certain brand name that you regard as a trademark. It is not compulsory to register a trademark, though many lawyers would recommend that you do so to avoid considerable and expensive difficulties that surround the enforcement of unregistered trade mark. What many lawyers do not tell you is that you should also have a certain amount of cashflow to fight any claims made during the process of registration because when you do register a trademark, you enter an arena where a whole of host of lawyers are sitting in wait for an trademark application to arise that has the slightest resemblance to the trademarks of their clients. So, it is better to go into the trademark registration process expecting to be challenged, rather than thinking that it is simply a matter of filing some paperwork. If you happen to get through the process without a challenge or a "cease and desist" letter then you should count yourself lucky.
Most large corporations or businesses that want to expand will trademark products before expanding and use their trademark registration in courts to defend their naming rights.
Trademarks in a global world
The legal system is a localized system of common law. Trade and day to day life were localized and legal system worked on juriisdictions. Even today, barristers and solicitors are registered to the State of Victoria, New South Wales, Western Australia, Tasmania, South Australia, Queensland, and not to Australia. Law is local and the world is evolving to a global village. Trademarks are registered to a country and the Madrid Protocol has made it easier to register International Trademarks but you are effectively registering a trademark in each country that has signed under the Madrid Protocol. There is no international umbrella organisation that overseas or enforces the registration of global trademarks because there is no international court that has jurisdiction over all countries. In this respect, the Internet has created a global world which has grown from local laws and the local laws are increasely ineffective in disputes over trademarks, company names, copyright and patents because of difficulties enforcing the law of one jurisdiction in another jurisdiction.
Trade Marks in Good Faith
When starting a new business or trademarking a product it is necessary to look for a company name or trademark that is not being used by someone else. Although you can hire a lawyer to do this, it is also prudent to do some research yourself. Google.com is useful search tool that allows you to search for a term or terms and provide you with a list of websites where that term is used and by going through these websites, you can investigate whether or not, another party is using a name that you wish to use as a trademark.This is a really easy way to do a preliminary search.
Check domain name
You should also check that the dot com of the trademark that you wish to register is available and registering the domain.if it is available. If the name of your trademark is available and you do not turn up search results with your trademark in use, then register your trademark domain name first because there is no guarantee that someone else will not register the domain name.
Owning a domain name does not entitle you to use the trademark of another
Domain name registration is a licence. You are effectively renting a space on the internet that has been leased to you and you do not have any legal rights over the domain name. The registrar can revoke the licence because unlike copyright or a patent, a domain name registration does not assign ownership rights. It is therefore wise to register domain names in good faith and that do not resemble any well known trademarks. The WIPO can make a ruling that will force the registrar of your domain name to transfer ownership of your domain to another party.
In the case betwen Telstra and whitepage.com.au, Telstra won the WIPO decision and had the site shut down. Sourced from http://www.blognow.com.au/blog/37455/WhitePagecomau_to_be_shut_down.html
"Over the last 12 months WhitePage.com.au has grown to host over 10,000 personal blogs visited by over 12,000 users per day.
It’s with bitter disappointment that we announce to you the news of the recent WIPO (world governing body that determines the ownership of domain names) order to transfer WhitePage.com.au to Telstra Corporation Limited.
On the 5th of October Dr. Michael J. Spence of WIPO (http://www.wipo.int/amc/en/domains/panel/profiles/spence-michaelj.pdf) has decided in favor of Telstra Corporation Limited in the dispute over the domain name WhitePage.com.au. Specifically Dr. Spence found that
- WhitePage.com.au is confusingly similar to whitepageS.com.au and breaches White Pages trademark owned by Telstra Corporation Limited.
- That AAA Marketing World (the current owner and people behind WhitePage.com.au) had NO LEGITIMATE BUSINESS interest in the WhitePage.com.au domain name.
- That AAA Marketing World has registered this domain name in BAD FAITH and in offering you free blogging service was ridding off the famous White Pages brand name.
Full text of this decision can be found at: http://www.wipo.int/amc/en/domains/decisions/html/2006/dau2006-0008.html" and in another case won rights over te1stra.net http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0757.html
For further reading on trademarks and domain names visit http://books.google.com/books?isbn=0070905797
Conclusion
When registering a domain name, it is important to do so in good faith. ie you intend to use your domain name for a legitimate purpose and choose a domain name that is no similar to a recognized brandname or trademark, especially from a big name company with an army of lawyers. Choosing a domain name is simply one part of protecting a naming asset but in itself is lease and unlike other disputes is settled by the WIPO, not local courts. It is however much easier to register a domain name than to have to hire a lawyer to wrestle a domain name from another party.
Trademark offices
You can visit http://www.ipaustralia.gov.au/trademarks/search_index.shtml to register trademarks in Australia.
http://www.wipo.int/madrid/en/ for International trademark registration. Note: Most countries have their own trademark office and if you require a trademark in a particular country it is best to research the requirements of each individual country.
Register Domain Names for your trademark
It is advisable to register the domain name for your trademarks. The process of acquiring a registered trademark is lengthy and registering a domain name is quick. Choose to register a domain name from where the big corporations register their domain from at less than half the price of the two major Australian domain name registrars. A comprehensive selection of domain names and domain name services at the right price.
Register your domain or transfer your domain to receive:
- A top quality product and service. Our wholesale provider is an established domain name registrar for major Australian and international corporations Passion Computing provide you with a generous discount on domain name registration. We also make the process easy to understand, that even the most novice users can manage their own domain names.
- FREE access to online management system that allows you to update your domain name records and keep track of all your domain name registrations. Login at any time and keep your details up to date
- FREE domain name forwarding or advanced DNS services. Domain name forwarding will allow you to buy domains for your trademarks and products and redirect them to your website for FREE. Forget paying $99 for this service elsewhere.
- Buy from a full suite of domain names and international domain names at competitive prices, with no hidden extras. Our prices are about half the price of the major Australian domain name sellers depending on the domain name registered..
- Freedom to buy a website hosting plan that suits you or use advanced DNS services to point your domain name to any server with a static ip.
- Free Australian domain name transfers and for all other domain names, you simply need to pay for another year of registration to transfer your domain name to us.
- Personal service - domain name registration systems are far from perfect and we are here to assist you. Read more.
Trademark FAQs
Question: I have registered a business name in Queensland, however, I would like to secure the name nationally. Do I need to register separately in each state or is this just if I were to practice in other states in Australia. Or is it best to just trademark it to protect the name and logo nationally?
Firstly, I would only register a name that I owned the .com to. Are you able to secure the business name in a .com domain space?
Then, I would buy both the .com and .com.au - this doesn't guarantee that anyone would challenge your right to use the name but it is a deterrent from anyone who is looking for a name for their business, if they find that the .com.au and .com is already taken, they are less likely to want to register it as a company name or trademark. Also, most established businesses have already bought their .com.au domain name. See also Starting a New Business in Australia
In terms of legally protecting yourself in Australia, you are best to register your business as a company rather than having to register the business name in each state. Click here to read more
Trademarks do afford you more legal protection but in reality, they can end up more trouble than they are worth because in order to register a trademark, you need to go through a process and there are lawyers ready and waiting to challenge every trademark application. If you can afford to register a trademark, and more importantly afford to defend a trademark then, yes it does afford you more legal protection. However, if you don't use your trademark in the marketplace, your trademark can also be challenged. Personally, I would just register the company name, buy the .com.au and .com domains but if you can afford to trademark the name, then do so. As a first step, most people would register the domain name and company name with ASIC because it will prevent, say someone from Victoria going to Fair Trading, registering a business name that is the same as yours and then applying for the .com.au domain. It is a bit of a hassle if you have to then wrestle over the domain name, even if you do end up getting the trademark and company name registered. A trademark can be registered later on when you have built up a brand and there is more of a need to protect your brand. See also http://www.ipaustralia.gov.au/trademarks/what_index.shtml for more information on Australian trademarks.