Preparing for the new “.au” rules– what should I know and what should I do?

/ Bill McFarlane / Important Updates

Does your domain name end with a “com.au” or “net.au” or “org.au” and “asn.au” and you are a foreign entity that uses an Australian Trade Mark to support that domain registration? If so, you may not be able to renew or apply for a domain if it doesn’t exactly match a trade mark you own.

These new rules will apply from12 April 2021. Yes – that’s less than two months from now.

If you are a foreign entity and your trade mark is a word and that same word is the domain name to which “.com.au” or any of the other top-level domains is added, then all is OK. However, if the trade mark is not the same, you should check the rules below. If the trade mark and the domain name are the same, you do not need to do anything at this time.

However, you need to be aware that the changes coming into force will apply the next time you want to register or renew a “.com.au” or “.net.au” domain incorporating your new trade mark. They also apply if you intend to transfer a domain to your entity upon the purchase of a domain name and the corresponding trade mark.

For those with similar domain names to either the trade mark you have applied for, or an existing registered trade mark, then the following information is very important to know.

When the “.au” Domain Administration (auDA) changed the eligibility rules, it strengthened the Australian presence requirement hence the effect of this change on domains held by foreign entities. As for Australian businesses they are not affected since they meet the local presence test and their domains do not need to meet the exact match criteria. The new rules state that the domain name must be an exact match to the relevant trade mark and apply to:

  1. newly applied-for domains;
  2. to domains that are transferred to a new owner; and
  3. all domains that are being renewed after 12 April 2021.

So what is an exact match? This requirement is different from the old rule, which allowed the domain name to be ‘closely and substantially connected to your trade mark’.

The domain name MUST include all the words in the same order as they appear in the Australian Trade Mark or Trade Mark application. However, there are some exceptions:

  1. you can ignore the .com.au and other DNS identifiers;
  2. you can ignore punctuation marks in the trade mark, such as: ‘! And ‘ ;
  3. you can ignore joining terms such as ‘a’, ‘the’, ‘and’, ‘of’; and
  4. you can ignore ampersands ‘&’.

The new rules are tough, and if your domain is not an exact match, you need to do something soon or make sure you act before the next domain renewal date.

There are many possibilities when considering how to act:

  • Change your domain name to ‘match’ your trade mark; or
  • Change your trade mark to ‘match’ your domain name.

At least one of the new rules allows domain registrations to be owned by a related body corporate, as long as the related company meets the Australian presence requirement.

You can read more about the rules changes at .auDA.

All of the above options have several important implications. So the way forward may not be as simple as it seems.  Please consider obtaining professional advice.

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Supporting Entrepreneurial Spirit

/ Madderns / Important Updates

Is your business at the entrepreneurial or start-up stage, and do you need help to take it to the next level? Are you doing something unique and need support to take that product or service to the world?

Applications are open for the joint Business SA-Federal Government Entrepreneurs’ Programme, with grants available.

The Entrepreneurs’ Programme helps owners and operators improve their business practices, become more competitive, and take advantage of growth opportunities.

A dedicated growth facilitator will provide access to extensive networks, information, resources, strategies, and specialists unique to business needs.

The growth facilitator will work with an owner or operator to develop a unique growth roadmap and help the business achieve its vision. Businesses can also apply for a matched Growth Grant of up to $20,000 to action recommendations from the business roadmap.

To be eligible for the program, a business must be solvent, have been trading for three years or more, have an ACN and an annual turnover or expenditure of between $1.5 million and $100 million (or $750,000 to $1.5 million if the business is based in remote Australia).

The business must also operate in one of the following growth sectors:

  • Advanced Manufacturing
  • Food and Agribusiness
  • Medical Technologies and Pharmaceuticals
  • Mining Equipment, Technology and services and/or Oil, Gas and Energy Resources or
  • Providing enabling technologies and/or ICT & Professional services to one or more of the growth sectors

Access to the scheme can be made at the following link:


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Patent Office Deadlines and COVID-19

/ Madderns / Important Updates

With much of the world in some form of lockdown in a bid to control the spread of the coronavirus, normal daily functions can be severely hampered. What does this mean for deadlines relating to intellectual property (IP), such as patents, trade marks and designs?

If you use intellectual property systems around the world, you will no doubt be aware that obtaining IP protection is driven by many deadlines which need to be met to keep your rights alive.

In some countries, lockdown measures have seen Patent and Trade Mark Offices closed, unable to receive or process any actions relating to IP protection. In many cases, any deadlines that fall during the period in which the respective office is closed are deferred until the day of re-opening of the office in that country. Any of those required actions can be performed on the first day the office re-opens.

In some countries, deadlines for specific actions have been deferred, but deadlines for other actions remain in place and must be met as they arise.

The provisions are also changing rapidly in response to the spread or containment of the coronavirus, and it is important to keep up to date with the prevailing requirements in any given country.

In other countries, the Patent and Trade Mark Offices remain fully operational with staff working remotely and in compliance with the prevailing distancing restrictions, to process actions via electronic remote systems. In some of these cases, there is no deferment of deadlines, and all actions must be performed by their normal deadlines to avoid lapsing or the matter being abandoned.

The Australian Patent Office (IP Australia) and the New Zealand Patent Office (IPONZ) have both remained open and have been operating as usual. Accordingly, there has been no deferment of any deadlines and all actions must be taken when normally due. The offices however, recognise the unusual circumstances under which we are all operating and have made provisions in cases where Applicants are having difficulties meeting timeframes because of the coronavirus outbreak, to allow for an extension in some circumstances. An application to the office setting out the relevant circumstances in which the Applicant is struggling to meet timeframes is likely to be treated favorably when considering whether an extension should be granted.

Where the ability to meet a legislated deadline has been impacted by the coronavirus, IP Australia (the Australian Patent Office) is providing a streamlined process for applying on-line for extensions of up to three months. Extension fees are also being waived. However, these extension provisions do not apply for renewal fee payments. These provisions will be in place until at least 31 May 2020.

Your IP attorney will be able to keep you advised of the prevailing requirements for your matters in different countries as they adapt to the changing conditions of the pandemic.

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New Zealand passes Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill

/ Karen Heilbronn Lee / Important Updates

The New Zealand Patents (Trans-Tasman Patent Attorneys and Other Matters) (TTPA) Amendment Bill passed into law on 15 November 2016, and is expected to commence on 24 February 2017.

The amendments in the Bill:

  • Remove ‘unity of invention’ as a ground to oppose a patent being granted, which will apply retrospectively from 13 September 2014 (the date of commencement of New Zealand’s Patents Act 2013);
  • Establish a single trans-Tasman patent attorney regime including a single qualification for registration and code of conduct; and
  • Create a single trans-Tasman patent attorney register.

It appears unity of invention as a ground for opposition was unintentionally introduced in New Zealand’s Patents Act 2013, as it was not present in the Patents Act 1953, and nor was there any policy intention to introduce lack of unity as a ground of opposition. By removing unity of invention as a ground for opposition, the TTPA Amendment Bill brings the grounds for opposing patent grant in New Zealand back in line with Australia and other jurisdictions.

The TTPA Amendment Bill also provides for a joint registration regime for Australian and New Zealand patent attorneys. Australian patent attorneys were previously able to register as New Zealand patent attorneys and vice versa; however, the TTPA Amendment Bill legislates that patent attorneys resident in New Zealand are subject to a new joint registration regime, which is based on the existing Australian registration regime. Existing registered Australian and New Zealand patent attorneys will automatically be registered as Trans-Tasman patent attorneys, and transitional provisions exist for those currently studying to become a New Zealand patent attorney. However, future patent attorneys resident in New Zealand (whom do not satisfy the transitional provisions) will be required to have the same educational qualifications as Australian patent attorneys. Additionally, all New Zealand patent attorneys will be held to the same code of conduct, disciplinary regime and continuing professional education requirements as existing Australian patent attorneys. Corresponding amendments to the Australian Patents Act 1990 relating to a single trans-Tasman patent attorney regime have already been passed and are due to commence before 25 February 2017.

Of note, the TTPA Amendment Bill was initially intended to also introduce legislation for a single Trans-Tasman patent application and examination process; however, these provisions were deleted from the Bill, and are not expected to be re-visited in the foreseeable future.

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Registering Foreign Word Marks in Australia

/ Irena Fizulic / Important Updates

Registering foreign word marks in Australia (the effect of the High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited concerning the trade marks “ORO” and “CINQUE STELLE”)

It appears from the recent High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited that it should now be easier to obtain trade mark registration in Australia for marks containing foreign words.  This case considered the registrability of the Italian words “ORO” and “CINQUE STELLE”  which mean “gold” and “five stars” respectively in English.

The High Court has clarified that the registrability of foreign words should be assessed in the same way as English words, namely by examining whether the word will convey a “tangible” meaning to anyone in Australia and the “ordinary significance” of that word to anyone who will encounter the goods in Australia.  In applying the “ordinary signification” test, the Court noted that the Italian words “oro” and “cinque stelle” did not convey a meaning or idea “sufficiently tangible to anyone in Australia concerned with coffee goods”. Further, the Court noted that the words “oro” and “cinque stelle”  are not “directly descriptive” of coffee, but rather “allusive” and metaphorical. Accordingly, the Court held that the marks “oro” and “cinque stelle” are inherently adapted to distinguish Cantarella’s goods from the goods of other traders and are therefore registrable.

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