The Law Handbook 2024

770 Section 7: Consumers, contracts, the internet and copyright trade mark infringement (or other legal liability such as for misleading or deceptive conduct under the Competition and Consumer Act 2010 (Cth) or the tort of passing off). Nor will it prevent a third party from registering and using a similar name, as noted in the examples above. When choosing a business name, avoid similarities to existing names. Having a distinctive name may help a business protect their name against infringe- ment. A list of terms that are considered to be too similar to each other is available in schedule 1 of the Business Names Registration (Availability of Names) Determination 2015 . New traders are advised to check for any registered or unregistered (common law) trade marks when choosing a business name. Registered business names can be searched in ASIC’s registers at https:// connectonline.asic.gov.au) . Domain names Registering a domain name does not, in itself, protect the registrant from trade mark infringement liability (or liability for misleading or deceptive conduct, or passing off) if another trader already has registered the trade mark or has common law rights in the mark. It is important to check that another trader does not already control a domain name and that use of the proposed domain name does not infringe another trader’s registered trade mark or give rise to liability for misleading or deceptive conduct or passing off. Due to changes in the AuDA rules that came into effect on 12 April 2021, ‘ .com.au’ and ‘ .net.au ’ domain names must now be more closely linked to the name of the domain name holder or to an Australian trade mark owned by the holder. Previously, domain names only had to be ‘closely and substantially connected to the registrant’, which included abbreviations of a trade mark owned by the holder. Now, ‘ .com.au’ and ‘ .net.au ’ domain names must match the trade mark by using words or numbers in the same order that they appear in the trade mark without any additional words or numbers. If the holder is not based in Australia and is also relying on the Australian trade mark to establish a presence in Australia, the domain name must match the trade mark exactly – including all the words being in the order in which they appear in the trade mark. Some exceptions apply in both cases in relation to commercial identifiers (e.g. Pty Ltd), punctuation marks, certain words common to trade marks (e.g. ‘a’, ‘the’, ‘and’ and ‘of ’) and ampersands (i.e. &). This means that formerly licenced domain names may not be entitled to be renewed if they do not comply with the new, more stringent qualification requirements. See also ‘Domain names and cyber-squatting’ in Chapter 7.5: The internet and the law. Protecting trade marks In Australia, there are two types of protection for trade marks. Common law trade marks are marks that have acquired a reputation through use that may give the owner of the trade mark enforceable rights, while registered trade marks are marks that have been registered under the TM Act. Common law rights can co-exist with rights arising from registration. Common law trade marks and passing off Common law trade mark rights arise from using a trade mark in Australia. The amount of use must be sufficient for the trade mark to acquire some reputation in Australia, as it is the trade mark owner’s reputation (as represented by the trade mark) that is the basis for a passing off action at common law. For a passing off action to succeed, the trade mark owner must establish: • that the trade mark has a reputation in Australia; • that a third party has made a misrepresentation relating to the trade mark; • that the goodwill (i.e. reputation) in the trade mark has been damaged or is likely to be damaged as a result of the misrepresentation. The trade mark has a reputation in Australia The level of reputation required for a passing off action depends on the nature of the trade mark owner’s goods or services, and the distinctiveness of the trade mark. A trade mark representing high value goods or services may require relatively little use to establish the necessary reputation, whereas a trade mark that describes the relevant goods will require extensive use to acquire a sufficient reputation.