Intellectual Property

New eligibility rules for .au domain names

On 12 April 2021, the .au Domain Administration Rules: Licensing (Rules) took effect, consolidating in excess of 30 policies and guidelines which previously applied to all “.au” domain names.

The Rules apply to all registrants who create, transfer or renew a domain name with a “.au” country code Top Level Domain (ccTLD) and the registrars who administer those domain names. The new Rules affect .au namespaces created, transferred or renewed after 12 April 2021.

This includes the following open namespaces:

  • “.com.au” and “.net.au” for commercial entities;
  • “.asn.au” for incorporated associations, political parties, trade unions, sporting and special interest clubs;
  • “.org.au” for charities and non-profit organisations; and
  • “.id.au” for individuals who are Australian citizens or residents.

.au Domain Administration Limited (auDA) is the administrator and policy body for the .au ccTLD.

Existing domain name licences expiring after 12 April 2021 continue to be governed by the legacy licensing rules applicable at the time of registration or last renewal until the current licence period ends.

Accordingly, if you had already registered a domain name before 12 April 2021, then the Rules will not apply to that domain name until your current licence period expires and you renew that domain name, or you transfer it.

Any proposed registrant applying for any “.au” domain name licence must:

  1. have an “Australian presence“; and
  2. satisfy any eligibility and allocation criteria

Australian presence

To prove an Australian presence, a registrant can show either that they are:

  • in Australia (such as an Australian citizen or permanent resident, entity with an ABN, incorporated association, partnership, a company registered in Australia under the Corporations Act) etc; or
  • the owner of, or applicant for, an Australian registered trade mark.

Eligibility and allocation criteria

An intended registrant with an Australian presence must also satisfy any eligibility and allocation criteria for the relevant namespace.

Those name spaces are open to registrants who are a “commercial entity” (including Commonwealth entities, statutory bodies, incorporated limited partnerships, trading co-operatives and the government) who apply for a domain name which is:

  • a match or acronym to the registrant’s name;
  • a match to the registrant’s Australian registered trade mark; or
  • a match or synonym to the registrant’s goods, services or premises or an event they sponsor or activity they facilitate, teach or train

For Australian present registrants, a match is defined to mean a domain name that is identical to one, some or all of the words or numbers used in the applicant’s legal name, business name or Australian trade mark. While words or numbers may be omitted, they must be in the same order and must not include any additional words or numbers.

Previously, for foreign entities, a domain name could be “closely and substantially connected“ to the registrant’s trade mark however, the Rules now require an “exact match“ to the words which are the subject of the trade mark registration (excluding trivial items such as punctuation and articles such as “a”, “the”, “of” or “&” etc).

Renting or leasing domain names

Under the Rules, registrants are not allowed to rent or lease their domain names to a third party.

This excludes companies who license domain names held by related bodies corporate (provided they still meet the Australian presence requirement).

What to do for renewal?

If the requirements of the Rules and not satisfied, the licence for that domain name may be suspended or cancelled by the registrar or auDA.

If that domain name registered before 12 April 2021, you can use the time before renewal to assess whether it will comply with the Rules at renewal time and if it doesn’t, you can adopt an appropriate strategy as required.

This may include:

  • Shore up your Australian presence (this is especially so for our clients that are based overseas) by having an entity registered in Australian or obtaining trade mark in Australia.
  • Apply for your business name to be registered an Australian trade mark (this has the added benefit of you owning your name so others can’t use it – remember simply registering a business name gives no ownership in the name at all)
  • Registering a new domain name that does exactly match your name or trade mark.
  • If there is a domain name that does match your name and it is already registered by someone else, you can consider lodging a complaint to the registrar or through the .au Dispute Resolution Policy. Note that they may have a legitimate right to the same domain name as you.
  • Check who the domain name is registered to – is it in your name or your business/company’s name?
  • Consider if your IP/domain name licensing arrangements are such that you rent or lease a domain name to or from a company who is not a related body corporate connected to Australia – if not it may need to be transferred.

FURTHER INFORMATION

For further information regarding the new eligibility rules for .au domain names or in relation to any commercial law issue, please contact McKillop Legal on (02) 9521 2455 or email help@mckilloplegal.com.au 

This information is general only and is not a substitute for proper legal advice. Please contact McKillop Legal to discuss your needs.

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McKillop Legal remains open for business and is fully operational despite the significant and unprecedented challenges facing our families, the Australian economy and our way of life as a result of the Coronavirus/COVID-19 pandemic.

We remain open for business and available to provide advice either by telephone, email or other services (and, if necessary, in person, abiding by the Government’s social distancing guidelines).

Our staff all have the ability to work remotely from home or in other places using our secure technology infrastructure and systems.

If you or your business has any legal issue it requires assistance with, whether relating to your rights or responsibilities relating to business, shutdowns or employment in relation to the pandemic or in relation to other matters, please call or email us and we will be in touch promptly.

Take care.

Who owns the content you post on social media?

With the recent resurgence of the popularity of  FaceApp on social media feeds and considering the Facebook-Cambridge Analytica scandal, it is timely to consider some of the concerns being raised over data security and privacy in relation to the use of common smartphone applications.

Most social media apps, including Facebook, Instagram, SnapChat and Twitter, require users to agree to an extremely broad set of Terms and Conditions of Use that allow them access to your data.

This data, which can be used and sold to third parties, is in reality the price for your use of the otherwise “free” app. As it’s often said, “If you’re not paying for it, you’re not the customer; you’re actually the product being sold.”

That said, what is the legal effect of the Terms of Service that we have each agreed to when using social media Apps and who owns the content you post on social media?

  • FaceApp’s Terms can be found here
  • Snapchat’s Terms can be found here
  • Twitter’s Terms can be found here
  • Facebook’s Terms can be found here and includes:

“…when you share, post, or upload content that is covered by intellectual property rights (like photos or videos) on or in connection with our Products, you grant us a non-exclusive, transferable, sub-licensable, royalty-free, and worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content (consistent with your privacy and application settings). This means, for example, that if you share a photo on Facebook, you give us permission to store, copy, and share it with others (again, consistent with your settings) such as service providers that support our service or other Facebook Products you use…”

  • Instagram’s Terms can be found here (Note – Instagram is one of Facebook’s Products).

They are all quite similar in effect as regards the ownership and use of your content – although generally you continue to own your content, they are able to use it as and when they see fit, forever, for free.

Did you know that you can request a copy of the data that Facebook has and it can be downloaded as a .zip file? To access the download your information tool, click here. You will probably be surprised at the depth of information that is held about you

Some people are shocked to find out that it has access to things like all the contacts on their phone to a record of messages sent or received, payment details and location information… it can be quite unnerving!

Reading the T&Cs is so boring… but an agreement is an agreement and you are agreeing to their Terms of Service when you use the App so you can’t complain. What you may not know is that each App will usually have its own privacy and data related settings which can be adjusted modify the type and amount of information obtained and stored (and seen by others) so you can modify them to help protect your own content.

You have to expect however that with any social type of App, there always be a level of information kept about you, sometimes for good reasons (eg, to feed you more content you may be interested in) but also sometimes for bad. It is up to you to decide how much data you want kept or shared and how that affects your user experience

FURTHER INFORMATION

Craig Pryor is principal solicitor at McKillop Legal.

For further information in relation to terms and conditions, consumer rights or any business or commercial law matter, contact Craig Pryor on (02) 9521 2455 or email craig@mckilloplegal.com.au

This information is general only and is not a substitute for proper legal advice.

Please contact McKillop Legal to discuss your needs. Stay up to date – LinkedIn Facebook Twitter

ASIC to remove trading names from ABN Lookup

Business owners please note that from 01 November 2023*, the ABN Lookup facility will only display registered business names and trading names will not be displayed.

The ABN Lookup contains a list of all Australian Business Numbers (ABN) and any associated business names.

If you want to continue to trade under a specific name, if you haven’t already done so, you must register it as a business name with the Australian Securities and Investments Commission (ASIC) as is required by the Business Names Registration Act 2001 (Cth).

You don’t need to register a business name if you trade under your own name (eg ‘John Smith’) or a company name (eg ‘John Smith Pty Ltd’), but you do need to have a business name if it’s anything else (eg ‘John Smith Plumbing’, ‘John Smith & Co’, ‘John Smith & Partners’, ‘John Smith & Sons’  or ‘John Smith & Associates’ then it must be registered).

Don’t rely on a business name registration thinking that it gives you any protection – as it doesn’t give you any protection at all – only a trade mark under the Trade Marks Act 1995 (Cth) can provide that kind of protection.

*when this blog post was initially published on 01 September, this was to take place on November 2018

FURTHER INFORMATION

Craig Pryor is principal solicitor at McKillop Legal. For further information in relation to intellectual property, commercial law or business related matters, contact Craig Pryor on (02) 9521 2455 or email craig@mckilloplegal.com.au.

This information is general only and is not a substitute for proper legal advice. Please contact McKillop Legal to discuss your legal concerns or objectives.

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Business names and trade marks are the same thing, right? Wrong

A BUSINESS NAME DOES NOT CONFER OWNERSHIP

Having a business name is a requirement so that people can ascertain the owners of a business they are dealing with. The register of business names is now maintained by ASIC.

Registration of a business name is required before carrying on a business or trade within Australia. Exceptions to registration include:

  • those operating as sole traders with their operating name being identical as their first name and surname (tip – if it has ‘& Co’, “& Partners” or ‘& Associates’ it must be registered);
  • partnerships where the operating name is the same as all of the partners’ names;
  • registered Australian companies whose operating name is the same as the company’s name (ie, with the “Pty Ltd” added).

While a business name is often used as a brand or trademark, having business name registration does not give ownership of that name. Only a trade mark under the Trade Marks Act 1995 (Cth) can provide that kind of protection.

Don’t rely on a business name registration thinking that it gives you any protection – it doesn’t give you any protection at all.

If you register a business, company or domain name, you do not automatically have the right to use that name as a trade mark. The same word(s) may be able to be registered by different people as a business name in other states and territories.

A REGISTERED TRADEMARK IS NECESSARY TO OWN A NAME

If you have a registered trade mark, you do have exclusive use of the trade mark throughout Australia (and other jurisdictions if you obtain registration there also) and you can take legal action for infringement of your trade mark if another person or entity uses it for goods or services like those covered by your trade mark registration.

A trademark can be a word or words, a phrase, a logo or a combination thereof (and even scents, sounds and colours!) which identify and distinguish a business’s goods or services from those of others. You can also trade mark your domain name if it fits within the requirements of the legislation.

There is no legal requirement to use the TM or ® symbols however, the TM symbol indicates that you have a pending application for the brand or that you are claiming some rights in the name without trademark registration whereas the ® symbol indicates that the trademark is registered.

After establishing or growing a business, the last thing you would want to do is receive a ‘cease and desist’ letter from the lawyers of a competitor asking you to cease using their client’s trade mark and to account to them for profits you have made, so don’t rely on a business name registration thinking that it gives you any protection, as it does not!

If you or your clients that are trading without a registered business name or under a brand without trademark protection, then they should be referred for advice by an expert in the area.

Similarly, if you have a trademark and become aware of someone infringing on your trademark, such as by using a very similar name or logo or indicating they have some association with your business or products when they do not, you should get advice from a lawyer on sending an appropriately worded letter asking them to cease using it,

FURTHER INFORMATION

Craig Pryor is principal solicitor at McKillop Legal. For further information in relation to intellectual property licensing or infringement or any commercial law matter, contact Craig Pryor on (02) 9521 2455 or email craig@mckilloplegal.com.au.

This information is general only and is not a substitute for proper legal advice. Please contact McKillop Legal to discuss your legal concerns or objectives.

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