What is a trademark?
A Trademark is a distinguishable mark that attribute ownership and quality to products and services whilst business and personal names identify business and persons irrespective of their products and services. A trademark must be in use; simply registering a trademark does not entitle you to deny another of the right to use that trademark. You must publically show a clear connection between your trade mark and your goods.
A simple way to mark your name as a trademark is to put the letters TM next to your trademark. This tells other people that the product you are selling is under a certain brand name that you regard as a trademark. It is not compulsory to register a trademark, though many lawyers would recommend that you do so to avoid considerable and expensive difficulties that surround the enforcement of unregistered trade mark. What many lawyers do not tell you is that you should also have a certain amount of cashflow to fight any claims made during the process of registration because when you do register a trademark, you enter an arena where a whole of host of lawyers are sitting in wait for a trademark application to arise that has the slightest resemblance to the trademarks of their clients. So, it is better to go into the trademark registration process expecting to be challenged, rather than thinking that it is simply a matter of filing some paperwork.
Most large corporations or businesses that want to expand will trademark products before expanding and use their trademark registration in courts to defend their naming rights.
Trademarks in a global world
The legal system is a localized system of common law. Trade and day to day life were localized and legal system worked on juriisdictions. Even today, barristers and solicitors are registered to the State of Victoria, New South Wales, Western Australia, Tasmania, South Australia, Queensland, and not to Australia. Law is local and the world is evolving to a global village. Trademarks are registered to a country and the Madrid Protocol has made it easier to register International Trademarks but you are effectively registering a trademark in each country that has signed under the Madrid Protocol. There is no international umbrella organisation that overseas or enforces the registration of global trademarks because there is no international court that has jurisdiction over all countries. In this respect, the Internet has created a global world which has grown from local laws and the local laws are increasely ineffective in disputes over trademarks, company names, copyright and patents because of difficulties enforcing the law of one jurisdiction in another jurisdiction.
Trade Marks in Good Faith
When starting a new business or trademarking a product it is necessary to look for a company name or trademark that is not being used by someone else. Although you can hire a lawyer to do this, it is also prudent to do some research yourself. Google.com is useful search tool that allows you to search for a term or terms and provide you with a list of websites where that term is used and by going through these websites, you can investigate whether or not, another party is using a name that you wish to use as a trademark.This is a really easy way to do a preliminary search.
Check domain name
You should also check that the dot com of the trademark that you wish to register is available and registering the domain. if it is available. If the .com domain name of your trademark is available and you do not turn up Google search results with your trademark name in use, then register your domain name first because there is no guarantee that someone else will not register the domain name. There are no eligibility requirements for global domains.
Owning a domain name does not entitle you to use the trademark of another
Domain name registration is a licence. You are effectively renting a space on the internet that has been leased to you and you do not have any legal rights over the domain name. The registrar can revoke the licence because unlike copyright or a patent, a domain name registration does not assign ownership rights. It is therefore wise to register domain names in good faith and that do not resemble any well known trademarks. The WIPO can make a ruling that will force the registrar of your domain name to transfer ownership of your domain to another party.
In the case betwen Telstra and whitepage.com.au, Telstra won the WIPO decision and had the site shut down. Sourced from http://www.blognow.com.au/blog/37455/WhitePagecomau_to_be_shut_down.html
"Over the last 12 months WhitePage.com.au has grown to host over 10,000 personal blogs visited by over 12,000 users per day.
It’s with bitter disappointment that we announce to you the news of the recent WIPO (world governing body that determines the ownership of domain names) order to transfer WhitePage.com.au to Telstra Corporation Limited.
On the 5th of October Dr. Michael J. Spence of WIPO (http://www.wipo.int/amc/en/domains/panel/profiles/spence-michaelj.pdf) has decided in favor of Telstra Corporation Limited in the dispute over the domain name WhitePage.com.au. Specifically Dr. Spence found that
- WhitePage.com.au is confusingly similar to whitepageS.com.au and breaches White Pages trademark owned by Telstra Corporation Limited.
- That AAA Marketing World (the current owner and people behind WhitePage.com.au) had NO LEGITIMATE BUSINESS interest in the WhitePage.com.au domain name.
- That AAA Marketing World has registered this domain name in BAD FAITH and in offering you free blogging service was ridding off the famous White Pages brand name.
Full text of this decision can be found at:http://www.wipo.int/amc/en/domains/decisions/html/2006/dau2006-0008.html" and in another case won rights overte1stra.net http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0757.html
For further reading on trademarks and domain names visit http://books.google.com/books?isbn=0070905797
When registering a domain name, it is important to do so in good faith. ie you intend to use your domain name for a legitimate purpose and choose a domain name that is not similar to a recognized brandname or trademark, especially from a big name company with an army of lawyers. Choosing a domain name is simply one part of protecting a naming asset but in itself it is a lease and unlike other disputes is settled by the WIPO, not local courts.
It is however much easier to register a domain name than to have to hire a lawyer to wrestle a domain name from another party. So if the domain name you want is available, register it as soon as you can.
You can visit http://www.ipaustralia.gov.au/trademarks/search_index.shtml to register trademarks in Australia directly.
http://www.wipo.int/madrid/en/ for International trademark registration. Note: Most countries have their own trademark office and if you require a trademark in a particular country it is best to research the requirements of each individual country.
Register Domain Names for your trademark
The process of acquiring a registered trademark is lengthy and registering a domain name is quick.