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TRADE MARKS, COMPANY and BUSINESS NAMES and DOMAIN NAMES : The same but different!

Date: 18 March 2013
Author: Joanne Martin
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The importance of protection of intellectual property is well understood by most and the selection and registration of a company name, business name or a domain name is often the first step taken by a business, and revisited at various stages of a life of a business, particularly in a restructure or business purchase or sale.  What is often misunderstood is that business and company names are not the same thing as trade marks, and so trade mark protection is overlooked.
 

Can a business and company name also be a trade mark?

Registration of a company or business name satisfies legal obligations of carrying on a business under that name.  It is important to recognise however, that a company name or business name does not give any proprietary rights.  Only a trade mark registration can provide the appropriate protections.

A trade mark is part of the brand, those words, logos and other indicia by which customers identify a business and its products and which distinguishes one business from competitors.  In some cases a company or business name may also function as a trade mark and if it meets the registration requirements of the Trade Marks Act it should be registered as a trade mark to obtain enforceable rights.   For example, Telstra is registered as part of a number of company names, it is registered as a business name in all States and Territories, it is a domain name, and is also registered as a trade mark- it is the name of the business and the key brand for its products and services. Also worth thinking about is that TELSTRA.COM is registered as a trade mark.
 

And what about Domain Names?

There has been a growth of domain names registered as trade marks, which reflects the growth in internet based businesses operating in Australia.  For those businesses with significant website business, a trade mark registration for the domain name should be considered.  By way of example, the company Seek Limited, provider of employment advertising services, has registered its various domain names such as SEEK.COM.AU and SEEK.CO.NZ as trade marks.

The importance of trade mark protection for domain names was recognised very early by some companies, leading to trade mark registrations for GOOGLE.COM, TOYSRUS.COM, AMAZON.COM, AOL.COM, as well as local company trade marks such as TELSTRA.COM, QUICKBEDS.COM, TICKETEK.COM and LINDEMANS.COM.   For businesses which have less distinctive domain names which cannot, by themselves, be registered as trade marks, it is common to achieve trade mark registration by combining the domain name with a logo, so that trade marks such as ROSES.COM.AU, SPOTLIGHT.COM.AU, PROPERTY.COM.AU and HOMESALES.COM.AU are registered with devices.
 

The key message

IP protection is a strategic process, obtaining the protections which meet legal requirements, ensuring freedom to use IP without infringing on the rights of others, to place others on notice of IP rights and to provide strong, enforceable rights against infringers.  Trade mark registrations including for domain names, should be part of what a business is doing, reflecting the level of the importance of IP rights and the level of determination to protect those rights.  Businesses which spend significant amounts of time and money developing and promoting their websites will see protection of the domain name as a trade mark, where available, as a valuable part of the IP portfolio.
 
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