Should I Register My Trade Mark Before Acquiring a Domain Name?
George Raptis
When establishing your business’ presence, your first step might be obtaining licensing rights to use a domain name. A domain name is an online address that allows consumers to access your business’ website. However, acquiring the right to use a domain name does not necessarily mean that you can prevent others from using the domain name. Instead, you must register a trade mark over the domain name. Whilst there is no right or wrong order to register a domain name and trade mark, this article explains some factors you should consider when deciding.
Domain Registration
You must register your domain name 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).
If you still need an ABN or ACN, you can provide your trade mark registration number if you have one. However, 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.
Ultimately, you can register domain names with the Australian Domain Name Authority (auDA). However, you should also note when you ‘purchase’ a domain name, you do not necessarily become the name’s owner. Instead, you purchase the right to use the name over a set period under a licensing agreement.
Trade Mark Registration
It is true that once you register a domain name, no one else can register it. So, why is trade mark registration necessary?
Trade mark registration gives you the exclusive right to use your trade mark concerning your goods and services. This means you can prevent others from using a similar or identical trade mark concerning similar or identical goods and services. For example, a small tech company should not sell laptops brandishing the Apple logo since Apple Inc. will likely sue them for trade mark infringement.
Alternatively, having a registered trade mark does not automatically entitle you to a domain name licence. This is partly because domain name registration is a different process governed by a different authority from trade mark registration.
Nevertheless, if you protect your domain name by registering it as a trade mark, you can prevent others from copying or misusing your name.
When Should I Register?
There is no right or wrong order for which you should register a domain name and trade mark. However, if you are running a business under a particular name, there are a few factors you should consider.
Conduct Searches
You cannot register a domain name that already exists. Similarly, it would not be easy to register a trade mark that is similar or identical to an existing trade mark. So, once you have an idea in mind for a domain name, you should check that the:
- domain name is available by searching the WHOIS database; and
- trade mark is available by searching the Australian Trade Mark Search.
If you encounter a similar or identical name that someone else has registered, you may need to look for alternate names.
Should I Consider Wait Times?
Another factor you should consider is how long it takes to register. Domain names typically take one to two days to register. Whereas once you submit your trade mark application, it can take up to four months for IP Australia to examine it and notify you of the outcome. Whilst you may be able to register a domain name in the interim, you are not guaranteed that IP Australia will accept your trade mark application.
How Much Will It Cost?
Although the price 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. On the other hand, the cost of a standard trade mark application will vary. For example, if you use the Picklist in your standard application, you must pay a fee of $250 per class of goods and services you include.
Key Takeaways
There is no right or wrong way to register a domain name and trade mark. However, when making your decision, you should consider the following:
- search the WHOIS database and the Australian Trade Mark Search to ensure the domain name and trade mark you desire are available for registration;
- it takes one to two days to register a domain name, whereas it takes up to four weeks for IP Australia to notify the outcome of your application; and
- the costs of both forms of registration.
If you want to protect your domain name using a registered trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
To gain trade mark protection in Australia, you must apply with IP Australia.
You can register your trade mark internationally by applying directly to each country’s IP office. Alternatively, you can apply through the World Intellectual Property Organisation using the Madrid Protocol. The Madrid Protocol allows you to file a single application in multiple member countries.