In order to register a .au domain name, there are a number of requirements that applicants must meet. Some of these rules are about to change.

In particular, the rules surrounding what constitutes an ‘Australian presence’ for the purposes of registering a domain name are set to change. On 17 June 2019, the .au Domain Administration (auDA), being Australia’s domain name policy-maker and regulatory body, published draft changes to the licensing rules of domain names. In particular, the changes which relate to the eligibility requirements for registering .au domain names are of particular importance.

Under the current rules, a foreign entity can register a .au domain name if it is the registered owner, or applicant, of an Australian trade mark that is referenced in the domain name. This is one of the primary ways in which a foreign company can register a .au domain name without having an office physically situated in Australia.

However, under the new rules, if using an Australian trade mark application or registration as the basis for a domain name application, the following conditions must be met:

1. the trade mark registered (or applied for) must be or include a word mark; and
2. the domain name applied for must be an exact match of that word mark.

The implications that this proposed change has on businesses based offshore and operating a .au website could be significant. If the overseas entity has its domain name registration based on an Australian trade mark application or registration for a logo, with no word mark element, or if the word mark element is not identical to the domain name, these proposed changes will render the basis for their .au domain name registrations potentially invalid.The proposed changes apply not only to those filing new .au domain names, but also to those businesses renewing their domain registrations (typically, Australian domain names must be renewed every 2 years). For foreign companies in this situation, it may be necessary to file an Australian trade mark application for a word mark (or a logo featuring a word mark element) which is identical to the relevant domain in order to fulfill the new eligibility requirements.

auDA are yet to announce the commencement date of the new rules, but we expect to hear regarding this in the near future. We will endeavour to keep you updated as further details come to light. Should you wish to discuss your .au domain name rights, or any trade mark rights pertaining to this development, please do not hesitate to email trademarks@actuateip.com.au for more information.

China currently operates a first-to-file trade mark system, meaning that the first person to file a trade mark application in China is considered the owner.  As a result, foreign and domestic brand owners have long suffered the problem of trade mark squatters filing for their own brands in China, preventing their registration and use of the mark. These applications filed by non-legitimate owners, who do not have any intention to use the mark, are considered bad faith trade mark applications.

New provisions to China’s trade mark laws come into effect on 1 November 2019 which aim to address this issue of bad faith applications.  In particular, the China National Intellectual Property Administration has made some key amendments to its Trademark Law which provides that “applications made in bad faith for trade mark registrations that are not intended for use shall be rejected”.   Importantly, this amendment empowers the trade mark registration authority to reject bad faith applications at the examination stage. This is anticipated to be far more effective than current provisions which requires bad faith applications to be challenged only through lengthy and expensive opposition and invalidation proceedings by brand owners. The new provision can also be invoked in an opposition proceeding or invalidation action. Bad faith trade mark applicants can face penalties by way of warnings or fines.

An additional key amendment is that authorities can impose fines and penalties not only on bad faith applicants but also on trade mark agencies. This imposes an obligation on trade mark agencies to censor bad faith applications. In particular, trade mark agencies should not accept instructions if it knows, or should know, that the application is being filed in bad faith. This shift in legislation is a positive sign that China is increasingly recognising the value of intellectual property.

Noting that in 2018, 7.37 million trade mark applications were filed in China, if you have any interest in trading in China in the future, it is increasingly important to file for your trade mark as early as possible. If you require any advice regarding registering your trade mark in China, please contact a member of our team on 1300 851 138 or email trademarks@actuateip.com.au and we’ll be happy to assist.

With the uncertainties surrounding Brexit, you may be wondering what will happen to your EU trade mark if the UK does leave the European Union. The current position is that holders of registered EU trade marks will automatically gain a UK trade mark registration, at no cost. The UK registration will be given the same filing and renewal dates as the EU mark.

This is great news for holders of registered EU marks, however, the transition is not as smooth for those with pending EU applications. In this case, if your EU mark is not registered by the date the UK leaves the EU, you will not be given a corresponding UK mark. Instead, following the date of exit by the UK, you will need to apply separately for a UK trade mark, at your own cost. You can, however, claim the same filing date as your EU trade mark if the UK application is filed within 9 months of the EU application.

Given the continuing uncertainties about Brexit, and if you have recently filed an EU but not UK application, it may be worth considering filing a UK application at this stage. If you require any advice regarding your EU or UK trade marks, please contact a member of our team on 1300 851 138 or email trademarks@actuateip.com.au and we’ll be happy to assist.