2 Reasons to Trade Mark Your Domain Name

Angus

• 7 June 2021
• 28 June 2021
• 4 min read

Your domain name is one of the most important aspects of your brand portfolio. It is usually the way customers first interact with your brand online. Making sure you have the right to use your domain name, and preventing others from taking advantage of your brand’s goodwill, is a fundamental consideration. If you are interested in understanding why you should trade mark your domain name, this article will explore some of the key considerations to consider before you do so.

Securing Your Brand

Do not take the goodwill in your brand for granted. Failing to trade mark is a common mistake that fledgling companies make. Another mistake that is often made is thinking that your domain name and business name are all the same. As you begin to develop your product or business, you need to separately:

• register your business name;
• licence your domain name; and
• trade mark your domain name, business name and logo.

The initial steps you should take as you start developing an online business are to licence your domain name and review whether someone else already has a trade mark over it. Once you have found out that it is available and licenced the domain, you will be ready to file a trade mark application.

It is crucial to make sure that nobody else has trade marked your domain name or business name before you apply to register your domain name. If you have not done this and your domain name is taken, your application will be rejected. If you continue to use the domain name without authority from the trade mark holder, you may be subject to legal claims from the owner.

For example, suppose you do not secure your domain name as a trade mark. In this case, another person could lodge a complaint against you through the Australian Domain Name Authority. This is a major issue and will cost your business precious time and money to address.

A Trade Mark, Domain Name or Both?

Registering a trade mark is the best way to protect your right to continue to use your domain name without the risk of another person starting legal proceedings against you. Generally, you will need to register your trade mark and purchase the right to use your domain name.

A trade mark over your domain name protects your business. It is a formal way of preventing other parties from using your intellectual property.

For example, say you had registered www.freshfantasicfridgefood.com.au as a trade mark because you sell fresh and fantastic fridge food. In this case, you might be able to lodge a complaint with the Australian Domain Name Authority and take legal action to protect your intellectual property if someone else tries to use it. This will only work if the domain in question is using com.au. This is because international bodies regulate other domains, such as .com or .org.

It is important to note that having a trade mark will not automatically allow access to the domain name licence. If you purchase the licence to use the domain name only, you will be subject to possible claims by people that have trade marked the same or similar words. It is usually best, if you want to use your branding exclusively, to own both the domain name and the trade mark. 

Key Takeaways

Before deciding to trade mark your domain name, you should consider:

• whether you have the right to use the domain name; and
• what your future plans are for your business. 

If you plan to expand the online presence of your business, then you should trade mark your domain name to protect your valuable brand. If you have any questions about registering a trade mark over your domain name, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions