When near enough isn’t enough!

Posted by Baxter IP on

When near enough isn’t enough!

Under a change in the rules administered by the au Domain Administration (auDA), foreign entities relying on an Australian trade mark to obtain and maintain .net.au and .com.au 2nd level domain (2LD) registrations will soon have to comply with stricter Australian Presence requirements.

As is, foreign entities relying on an Australian registered trade mark (or application) are eligible for a .net.au and .com.au 2LD if the domain name is exactly the same, or an abbreviation or acronym of the trade mark.  In other words, the foreign entity could choose a domain name that is closely and substantially connected to their trade mark. For example, if the foreign entity’s Australian trade mark is Top Loaded Donuts, that entity could have:

  • toploadeddonuts.com.au
  • toploadeddonuts.net.au
  • loadeddonuts.com.au
  • loadeddonuts.net.au
  • toploaded.com.au
  • toploaded.net.au
  • tld.com.au
  • tld.net.au

From 12 April 2021, where a foreign entity is relying on an Australian registered trade mark (or application) to meet auDA’s Australian Presence requirement, the domain must be identical to the trade mark. This means that if foreign entity’s Australian trade mark is Top Loaded Donuts, they would be entitled to:

  • toploadeddonuts.com.au
  • toploadeddonuts.net.au

but none of the other examples provided above. There will be some minor exclusions, such as allowing for punctuation marks like exclamation marks, ‘articles’ such as “a”, “the” and “of”.

This new rule will apply to all new domain registrations from 12 April 2021, and renewals of existing domain licences.

An exact match trade mark

For a trade mark to meet the requirement that it be an exact match with the desired .net.au  or .com.au 2LD, it will need to be a Word trade mark, not a composite or logo version of the trade mark. This may be the time for foreign entities to conduct a trade mark health check, to determine if they have the appropriate trade mark registration in place to obtain and maintain their .net.au  and .com.au 2LDs.

An Australian company or person does not need to meet the new exact match trade mark requirement

Where it might not be possible for a foreign  to obtain a Word trade mark, then an alternative option for the foreign entity to meet the auDA Australian Presence requirement could be to transfer the ownership rights of a composite or logo trade mark to a related  Australian registered company. Using our Top Loaded Donuts example:

If our foreign entity’s  Australian trade mark was not for the words “Top Loaded Donuts” alone but included some highly stylised lettering and an image of a donut (a “composite” trade mark), then that composite trade mark would no longer qualify as an exact match trade mark for a toploadeddonuts 2LD after 12 April. In that case, an option for the foreign entity is to transfer the ownership of the composite trade mark to its related Australian registered company, to meet the Australian Presence requirement. The Australian registered company will be able to apply for and maintain a .net.au  or .com.au 2LD that is substantially and closely connected to the composite trade mark.

How we can help

We can assist by:

  • Conducting a review of your trade mark portfolio
  • Providing advice and assistance with registering a word trade mark
  • Preparing appropriate trade mark assignment documents
  • Recording the transfer of ownership of a trade mark with IP Australia
  • Preparing trade mark licences that may be required

You can read the new rules here.