Changing rules for owning Australian domain names relying on an Australian trademark

From 12 April 2021, the new rules for owning domain names in Australia will take effect. The primary changes affect domain name holders who rely on an Australian trademark as their eligibility to hold a or in Australia.

Currently, if you are:

(i) A relevant Australian business, or

(ii) Having a relevant trademark

You can own a domain names or

If you are a relevant Australian business, no need to worry, no changes too much. However, if you are owning or based on having a relevant trademark, some dramatic changes will affect you. As from 12 April 2021, the trademark must be an “exact match” to meet the requirements, not just merely be “exact match” as previously.

For example:

With the old rules, if you own a trademark Maygust which will allow you to register the following domain names:

(i) (exact match)

(ii) (abbreviation)

(iii) (acronym)

Under new rules, only the (i) example (Maygust) can be registered. The example (ii) and (iii) would not be registered.

For more details about the definition of “exact match” you can read here

If you own a or, but not “Australian presence”, filing a new trademark application that is an “exact match” with your domain is one of the best options for you to consider.

If you have any questions or concerns about trademark issues, feel free to contact us. Maygust Trademark Attorneys are happy to assist you! Photo: Unsplash/Markus