Trademarks... count for nothing

[DavidL]

OK bit of a dramatic title but so many threads refer to this domain having a TM or being close to a TM etc and how that means you're going to lose it or are cybersquatting etc.

However, I contest that it doesn't make any difference when it comes to domains.

When it comes to infringing on someone's IP, it's all about the usage - whether you are using that name/brand/trademark in bad faith for a commercial gain.

If Johnny's Pie Shop makes a complaint that Fred's Pastry has registered johnnyspieshop.com.au and redirected it to his own site, the name will likely be transferred regardless of any existing TMs.

If BMW say you can't use BMWDiscounts.com.au (as they did to me) and produce hundreds of pages of documents regarding their trademarks for this and that, then it's really irrelevant if the name isn't being used in bad faith.

auDA don't recognise them - the misspelling policy (amongst others) is there to protect 'brand holders' not 'TM holders'

Quite right too - why should only companies who have the $$$ to apply for and pay for a trademark be the only ones that have some sort of rights.

So, don't just dismiss a domain because it's got a TM in it. And, on the flip side, don't assume that just because a brand/products isn't TM'd it's automatically OK to register a related domain.

 

[findtim]

davidL did i read this sentence wrong?

"Quite right too - why should only companies who have the $$$ to apply for and pay for a domain be the only ones that have some sort of rights."

should it not read "pay for a trademark..." ?

no critism just clarification

tim

 

[DavidL]

davidL did i read this sentence wrong?

"Quite right too - why should only companies who have the $$$ to apply for and pay for a domain be the only ones that have some sort of rights."

should it not read "pay for a trademark..." ?

no critism just clarification

tim

Oops - you're quite right, thanks. Editing now

 

[Designer]

@DavidL - and a domain like harrypotter.net.au? This drops today. Any justifiable reason to have registered this if you're not TM holder?

 

[DavidL]

@DavidL - and a domain like harrypotter.net.au? This drops today. Any justifiable reason to have registered this if you're not TM holder?

Sure you could have a Harry Potter fan site (with appropriate disclaimers) or possibly even sell Harry Potter merchandise (exclusively of course).

Here is the crux of the Oki Data defence:

The criteria set out in the Oki Data decision are:

1. the respondent must actually be offering the goods or services the subject of the trade mark;

2. the respondent must only be offering those goods or services;

3. the website must accurately describe the relationship between the respondent and the trade mark owner; and

4. the respondent must not try to take all of the relevant domain names so as to deprive the trade mark owner of the ability to register its trade mark as a domain name.

However the point of this thread was not to suggest it's OK to use TM's in domains but rather it doesn't matter if that brand is TM'ed or not.

For example if JK Rowling hadn't ever gotten round to registering 'Harry Potter' as a TM, you'd be in the exact same situation with the same risks.

 

[johno69]

@DavidL - and a domain like harrypotter.net.au? This drops today. Any justifiable reason to have registered this if you're not TM holder?

There's a Harry Potter that once reported for Channel 10 news.

He'd have no problem.

 

[findtim]

have you checked out the .com.au !

 

[neddy]

have you checked out the .com.au !

Relying on the old Business Name "close and substantial" - however they have a problem.

Business Name is removed. https://connectonline.asic.gov.au/R...earchText=harry potter&searchType=OrgAndBusNm
.