Costs to Consider Before You Trade Mark Your Domain Name

George Raptis

• 19 January 2022
• 7 April 2022
• 6 min read

Nowadays, many businesses depend on the online market to generate sales. For this reason, a domain name can be one of the most important ways that your business establishes itself in this market. A domain name gives online businesses a unique electronic address that allows your customers to find your business’ website. If you are thinking of registering a domain name and registering a trade mark to protect your domain name, you should consider the following costs.

Cost of an Australian Domain Name

Although you do not have to register a domain name when you first start your business, you will need to register it to set up your website with a unique domain. Before you register a domain name, you must ensure that you:

• check that your domain name is available, such as using the WHOIS database; and
• have an Australian Business Number (ABN) or Australian Company Number (ACN).

In the absence of an ABN or ACN, you can also provide a trade mark you have registered in Australia.

As of 12 April 2021, you should note that if you want to rely on an Australian trade mark registration as proof of your eligibility to hold a ‘.com.au’ domain name, the domain must be an exact match to your Australian trade mark. 

You can register a domain name through a reputable registrar like .au Domain Administration Ltd (.auDA). Although the price you pay for a domain name will vary depending on the registrar you choose, auDA has set the wholesale price for a “.au” domain name at $8.67/year, including GST.

Remember, when you ‘purchase’ a domain name, you do not become the name’s owner. Instead, you purchase the right to use the name over a set period under a licensing agreement.

Costs of a Trade Mark

In some cases, your domain name may become synonymous with your brand. Therefore, many domain name holders protect their domain name using registered trade marks. Under Australian trade mark law, a registered trade mark gives you the exclusive right to use, licence and sell your trade mark. That is to say, if someone has a domain name that is the same or similar to your registered trade mark, and they use the domain name as a trade mark, you might have grounds to prevent the domain name holder from infringing on your intellectual property.

There are two main application pathways via IP Australia’s online services when it comes to trade mark registration.

TM Headstart Application

When you apply for a trade mark using the TM Headstart service, an expert examiner at IP Australia will assess your application before you formally file your application to register the trade mark. This gives you the chance to make amendments to your application before formally submitting it for IP Australia’s review.

Using a TM Headstart application, there is a two-part payment process. Part 1 involves a $200 fee per class of goods and services included in your application. This is because when you file for a trade mark, you must register it in connection with specific classes of goods and services that your business provides. Ultimately, the more classes of goods and services you include, the higher the cost of your application.

Once you have paid your Part 1 fee and have received your examination, you can formally file your application to IP Australia. Under the Part 2 payment, you must pay a $130 fee per class included in your application.

Standard Trade Mark Application

A standard application does not entitle you to the pre-assessment service under the TM Headstart application. Instead, IP Australia reviews your application after filing (approximately 4-5 months from your filing date). If IP Australia decides to accept your application, IP Australia will formally register your trade mark. 

The fees associated with a standard trade mark application will depend on whether you use the trade mark picklist. As mentioned above, you must register a trade mark in connection with specific classes of goods and services that your business provides. To help refine this process, the trade mark picklist groups common goods and services into classes. If you use the picklist in your trade mark application, your application will cost $250 per class.

If your business’ goods and services do not fit within any of the classes listed, you may have to submit an application that does not select items from the picklist. In this instance, your application will cost $400 per class. 

Legal Fees

Often, business owners will seek legal advice when registering their trade mark. This is because, without experience in the field, the trade mark registration process can be complex and intricate. If you make a mistake in a certain step in the application, this can lead to inadequate trade mark protection. In this sense, if you choose to protect your domain name via a registered trade mark, we recommend that you enlist the help of a lawyer.

Key Takeaways

Since your domain name is often synonymous with your brand, many domain name holders choose to register a trade mark to protect their domain name. This way, they obtain the exclusive right to use, licence and sell their mark. When it comes to the costs of protecting a domain name via a registered trade mark, you should consider:

• licensing fees associated with domain name registration;
• fees associated with trade mark registration; and 
• any legal fees if you hire a lawyer to help you complete the process of registration. 

If you have any questions about protecting your domain name using a registered trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 for help.

Frequently Asked Questions