TM pending accepted

[highnfar]

Hi guys,

If I register a domain name which has an exact match TM on ipaustralia, but still in pending accepted status, will it cause any problem later? Thanks.

 

[DavidL]

It could well do. Depends on whether you infringe on the TM though.

If it's an exact match of the TM, you probably are - people may well think you're the TM holder as soon as they see the domain (that's what lawyers would claim anyway)

Eg if 'Toyota' was the TM

Toyota.com.au you'd be stuffed
UsedToyotasForSale.com.au you'd be OK

 

[Lemon]

Not sure but I think once the trademark is accepted the actual registration date is backdated to the original date of application. So if you reg the domain now their TM would take precedence.

 

[highnfar]

Thanks David.

How about, if the pending accept TM term is "abcd", and I register abcd.com.au ? Is it too risky?

It could well do. Depends on whether you infringe on the TM though.

If it's an exact match of the TM, you probably are - people may well think you're the TM holder as soon as they see the domain (that's what lawyers would claim anyway)

Eg if 'Toyota' was the TM

Toyota.com.au you'd be stuffed
UsedToyotasForSale.com.au you'd be OK

 

[Shane]

Yep, the trademark will be dated as per the application date. I have a trademark of my own which is about a month into the pending status.

From the IP Australia website:

"Remember that, if granted, rights from registration of a trade mark accrue from the date of filing."

 

[Shane]

On another note, I can't believe anyone would apply for a trademark without first spending $20 on the domain. Seems crazy...

 

[highnfar]

Thanks Lemon.

Well.. I really need to do more research on TM policies.

Not sure but I think once the trademark is accepted the actual registration date is backdated to the original date of application. So if you reg the domain now their TM would take precedence.

 

[highnfar]

Hi one, thanks for the info!

Yep, the trademark will be dated as per the application date. I have a trademark of my own which is about a month into the pending status.

From the IP Australia website:

"Remember that, if granted, rights from registration of a trade mark accrue from the date of filing."

 

[highnfar]

I did research on the TM applicant just now, seems it's a oversea company, and they haven't registered any Australian company yet.

On another note, I can't believe anyone would apply for a trademark without first spending $20 on the domain. Seems crazy...

 

[DavidL]

The question is 'Why are you registering the domain'? If you see value in it due to the company and their pending TM then that's infringement and not right (legally or ethically)

If it's a coincidence then maybe you take your chances... But my feeling is don't!

 

[Chris.C]

Eg if 'Toyota' was the TM

Toyota.com.au you'd be stuffed
UsedToyotasForSale.com.au you'd be OK

In general I'd recommend staying away from domains with any TM term in them.

From a conversation I had with an IP lawyer about the potential of buying a number of UsedBrandProduct.com.au style domains - he said it's grey area and there's definitely grounds for the Brand to take action even though the name doesn't mislead people to believe you sell New Brand Product.

 

[DavidL]

In general I'd recommend staying away from domains with any TM term in them.

From a conversation I had with an IP lawyer about the potential of buying a number of UsedBrandProduct.com.au style domains - he said it's grey area and there's definitely grounds for the Brand to take action even though the name doesn't mislead people to believe you sell New Brand Product.

Here we go again... actually bugger it! I'm over this discussion

Suffice to say in the millions of domains registrations around the world, I'm not sure a single domainer has actually been sued. And that includes some brazen blatant cases.

 

[Chris.C]

I'm not sure a single domainer has actually been sued. And that includes some brazen blatant cases.

That doesn't make it legal. It just makes brand managers lazy.

Plus:

http://techcrunch.com/2010/01/07/apple-domain-names/

 

[highnfar]

Thanks cncventure and David.

hum... I just took few hours reading on ipaustralia, (I can use another replacement for the domain, but here just wanna discuss possibilities). As the TM is only in two classes, is it possible for me to legally have the domain name if I apply the exact same TM word within different classed? Will ipaustralia accept this application? Or will it cause more problems? Thanks.

 

[Cooper Mills DomainLawyer]

I would advise against being opportunistic and getting involved in registering domain names which are likely to result in trademark infringements. This type of behaviour is bad for the domaining industry. I have acted for a number of people who have found themselves involved in Federal Court litigation they didn't want, which ends up costing thousands of dollars, more than they ever earned out of the domains!

Trademark law is complicated. There are plenty of good domains out there which you can make money from, in an ethical and legal way, most of the guys (and girls) on the forum do that every day!

 

[highnfar]

Thanks for your advice. I decided to go plan b to avoid risks.

I would advise against being opportunistic and getting involved in registering domain names which are likely to result in trademark infringements. This type of behaviour is bad for the domaining industry. I have acted for a number of people who have found themselves involved in Federal Court litigation they didn't want, which ends up costing thousands of dollars, more than they ever earned out of the domains!

Trademark law is complicated. There are plenty of good domains out there which you can make money from, in an ethical and legal way, most of the guys (and girls) on the forum do that every day!