Newsletter - March 2021

New Rules for Australian Domain Names

New rules come into effect for Australian domain names on 12 April 2021. These changes potentially affect businesses that own .com.au, .net.au and .org.au domain names.

Current Rules

Holders of Australian domain names must have an “Australian presence”. Many businesses based outside Australia use an Australian trade mark to meet this requirement. Under the current auDA rules, it is possible to hold a domain name that is “closely and substantially connected” to your Australian trade mark.

New Rules

From 12 April 2021 however, a businesses’ domain name must be an “exact match” to its Australian trade mark in order to meet the Australian presence requirement to hold the domain.  An “exact match” means that the domain must include all of the words of the registrant’s trade mark, in the same order they appear in the Australian trade mark, with the exception of punctuation marks, the words “a”, “the”, “and”, or “of”, or DNS identifiers such as “.com.au.”

For .org.au domain name holders, unincorporated associations will no longer be eligible to hold org.au domains unless they meet the definition of a not-for-profit organization under one of the other criteria (such as a charitable trust or non-trading cooperative).

What to do if your business is affected by the changes

There is no one-size-fits-all answer. The action required to protect existing Australian domain names will depend on the extent of a businesses’ activity in Australia and whether or not their existing domain and trade mark would be considered an “exact match” under the new rules. If your business currently holds an Australian domain that relies on an Australian trade mark to meet the Australian presence requirement, and you wish to discuss your options, please contact us.

Trade Marks and the Global Market

It is important to remember there is no system that allows for the registration of a ‘world wide trade mark’. When you register a trade mark in a certain jurisdiction, such as New Zealand, it is protected and enforceable in that jurisdiction only. 

If you are using your trade mark in other countries, for example if you are exporting products under that brand, or if you are directly targeting a particular country for retail or other services, we strongly recommended you register your trade mark in those countries. Once registered, it means that you are legally entitled use your mark in those countries. If you fail to do so, you may be at risk of infringing the rights of other traders in those countries.

Registering a trade mark in other countries is much easier and more cost effective than ever due to international systems such as the Madrid Protocol. Zone can help with international trade mark research and registration to protect your rights around the world. Contact us today to find out more.

Easter and ANZAC Holiday Hours

Zone will be closed for business on Friday the 2nd of April, and Monday 5th of April 2021 for Easter, as well as Monday 26th of April 2021 for ANZAC day.

Please note the New Zealand Intellectual Property Office and IP Australia will also be closed.

Applications and documents submitted on these dates will have the following working day as their filing date. If the deadline for filing an application or document falls on these dates, then the application or document will be filed the following day.