The Horse has Bolted! Trademarks and Domains Names

Company A starts and builds up a successful online e-commerce store selling 'Product X' but only registers a ‘.com’ name and doesn’t bother to apply for a trademark. Company B also in the same industry in Australia creates a product called Product A, which happens to be almost exactly the same name as Company A, in other words ‘Company A’ becomes the product name of their new range of products called ‘Product A’.

Company B then registers an Australian domain name (.com.au) for their new product range now called ‘Product A’ and then proceeds to sell their range of products or redirect people to their ‘Company B’ be website.

Company A notices is that their sales have dropped off significantly to the point where they need to investigate what’s happening then discover Product A being sold by Company B and the fact that Company B has registered the various domain names for their new product line, Company A complains to auDA that the domain name is the same as their company name for Company A, auDA refuses to take action because the domain name is linked substantially to their new product range, or now well-established product range, company A sees a lawyer who tells them to take action against a Company B for passing themselves off as Company A promising Company A litigation is the best way to go and that they can get the offending website and product range shutdown.

The problem is Company B did not pass themselves off as Company A but has a product called Product A, and therein lies the problem.

If Company A had of taken the trouble to register a Trademark for their company name and products it would not be such a problem but now Company B is well established in the marketplace with their product range ‘Product A’.

The story is still ongoing and it will be very expensive for both parties, I’m not involved but from what I’m seeing and although Company A has now applied for a trademark the horse has bolted, it may be too late to win the battle, but you never know. Whichever way it turns out it will be expensive.

The moral of the story is if you have a brand, product or range of services that bring in your income and you want to protect it the best way to do that is to own a registered trademark around that brand, logo or business name. I’m a management consultant and primarily help people with their IP strategies and apply for Trademarks to protect their brands.

Note: .au Domain Administration Ltd (auDA) is the policy authority and industry self-regulatory body for the .au domain space.

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