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Domain Name Trademark Rules For Foreign Companies

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Domain name trademark rules are currently still in transition. Given interest from overseas clients, it’s timely to post an update.

Domain Name Trademark Rule Changes – Coming Up

As of 1 July 2020, auDA confirmed there will be changes to licensing rules for domain name registration. These are very important for overseas companies hoping to buy a domain name based on ownership of an Australian trade mark.

Owning (or having applied for) a registered Australian trade mark will be enough to qualify you for the ‘presence’ test.

Domain Name Trademark Rules - Changes For Foreign Companies

In fact, it will be sufficient to have applied for a registered trade mark.

Australian presence would then be defined as follows.

(17) an Australian Trademark application or registration in circumstances where a Person does not meet any other Australian Presence requirements but who has applied for or registered a word mark under the Trade Marks Act 1995 (Cth), and who thereby may apply to register a domain name that is an exact match of the word mark applied for or registered.

But Wait! Only Word Marks, Only Exact Trademarks In Your Domain Name

This is a big one. The new auDA licensing rules also include the following narrow restrictions. These apply to overseas companies basing a domain name application on an Australia trademark.

  • the trademark registered or applied for must be or include a word mark.
  • the domain name applied for must be an exact match of that word mark.
  • an exact match does allow you to exlude:
    • any corporate identifiers (eg Inc, Pty Ltd, LLC)
    • definite and indefinite articles such as ‘the’, ‘and’, ‘of’
    • DNS identifiers such as ‘com.au’, ‘com’, etcetera.

So, once the new .au licensing rules come into effect, auDA will consider only the ‘word’ part of the trade mark when deciding whether it’s sufficient to to satisfy the Australian presence rule.

The changes will apply to names created or renewed after the new licensing rules come into effect. According to recent correspondence with  auDA, this may not happen until 2021. BUT the rules will apply retrospectively.

Let Acorn Trade Mark Attorneys Help – Please!

Naturally, we’re happy to discuss domain name trademark rule changes with you. It’s critical to do this if you’re an overseas company hoping to base your Australian domain name on your Australian trademark (or trademark application). Contact us here.

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