Trademark question

[techmo]

I want to understand more about whether or not a series of domain names could be infringing upon another business entity's trademark.

Say a business files for a class 35 trademark whose status is listed in IP Australia's database as 'Under Examination - Extension Fees Not Required'.

Say the trademark is for Great Places Pty Ltd, and their domain name is greatplaces.com.au

Would registering a series of domain names like

greatplacesinmelbourne.com.au
greatplacesinsydney.com.au

Be infringing upon their trademark?

What is pertinent here is, is a trademark considered active (And therefore I would be in breach of it) if it is under examination, and the entity's application has not yet been accepted?

Alternatively....

What if the trademark for was Great Places Pty Ltd and their domain name was greatplacesin.com.au and I registered a series of domain names like

greatplacesinmelbourne.com.au
greatplacesinsydney.com.au

Would I be in breach of their mark?

What if the trademark was for Great Places In Pty Ltd and their domain name was greatplacesin.com.au and I registered a series of domain names like

Thanks for all your help DNTs

 

[DavidL]

The pertinent issue is not whether you have a TM within the domain but how this TM is being used. In fact it doesn't even matter whether it's a TM or not. You can still be considered trading off a person's reputation even if they don't have a TM.

In the examples you gave, if they had a popular website which they used to promote multiple destinations by using a structure like www.greatplacesin.com.au/Sydney where they titled and promoted the section as being called 'Great Places in Sydney', then they may well be able to argue you were tarding off their marketing/brand.

So, don't worry about a TM or not. Intsead, think about the question 'Would my domain encourage a reasonable person to unintentionally visit my site because they were looking for another company'? Or 'Would a reasonable person think I had something to do with this other site dues to my use of this domain?'

Of course in many cases there's an argument both ways so it depends on the AUDRP panel, auDA, or the lawyers concerned

 

[Shane]

I can't imagine it being an issue. I have some experience with trademarks, and I know that they won't allow the registration of a trademark that will infringe on the rights of others to use a common or generic term.

They may allow the registration of "Great Places" as a brand, but I doubt they would stop other people from using terms like "great places to visit" etc. It's just too common and discriptive.

 

[Cooper Mills DomainLawyer]

The filing date is the key here, for example is Company A files an application for GreatPlaces on 1 January, and Party B registers domain names like GreatPlaces.com after this date (for example 1 March), then if Company A successfully gets its trademark registered, then they have protection from the filing date (1 January), which can be a problem if the use of the domain name is infringing the mark. There are of course many factors to be considered and other variables that may effect your personal circumstances, so if you aren't sure get some legal advice.

 

[techmo]

Many thanks for all your help guys, much appreciated