Debra: How does common law apply to trademarks used on websites intended for nationwide commerce?
I understand that common law can protect a trademark in a limited geographical area. The area would be the locality that the business operates in. However, if a trademark is used on an Internet website that was designed to solicit business anywhere, does common law extend to everywhere the website can be viewed?
Answers and Views:
Answer by Grecian2000
Hi,
Under Australian law, trademarks are protected exclusively through the operation of the Trade Marks Act, NOT through common law. Common law is only used to interpret the provisions of the Act, but it does not, of itself, protect your trademark.
Secondly, a trademark is not protected unless it is properly registered pursuant to the Act. Once it is registered, it is protected ONLY within Australia and only for the various classes you have registered the trademark for. Note that registration protects your mark through ALL of Australia – even if your initial business was localised.
However, you might wish to note that you will have NO protection of your trademark in the international sphere – even if it is protected within Australia. You would need to register your mark in every country you want to target in your business (this seems reasonable given that you may wish to expand your business to international Internet clients).
However, you may wish to apply some commercial acumen to this – would you bother to register your trademark in Yemen? Zimbabwe? Costa Rica? Would the copying of that mark in these countries really affect your business? Only register in critical markets – presumably the UK, EU and USA.
Finally, if you do want to register your mark outside of Australia, you will be given a priority date from the day you first registered in Australia. In this way, your mark outside of Australia will be protected retrospectively (hoping that doesn’t confuse you!).
Cheers & good luck
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