Hi All, I would like to register a domain www . best sports .com.au (not the real name) I checked the Australian government website and they say that a company from the EU has registered the word "Best Sports" (not really that word). A website also exists for the .com version. These 2 words are so common that it sounds ridiculous that they are able to not allow others to use such everyday words. Does an EU trademark have any power in Australia ? If i registered the .com.au domain name and created a site that had nothing to do with what the existing company sold or did would that be ok ? Any feedback would be great. Thanks.
Does an EU trademark have any power in Australia? Yes, but how much depends on several factors. The famousness of the mark and how you intend to use it. If your site has nothing to do with what the other site offers and the mark is not so famous that as soon as you say it you think of the other company, you will probably be fine (given that the words are generic). You'll have to check their trademark registration to see exactly what it is for. .au domains use a modified version of UDRP, and the decisions don't exactly match. Check the site for auDRP to see recent decisions.
Thanks for you reply. Their site advertises a hand held computer game whereas mine will be a sports news portal. This trademark is unknown and was only trademarked in Oct 2007. I think I should be ok then.....
As long as your site does not have any similarity or confusion with the trademark then you wont run into any problems. It could be argued by them that they are an australian company and have rights to .au domains but when domain extensions come on the market there is always a "sunrise" period where all trademark holders are given the opportunity to register their domains before the public can. Because that sunrise period was years ago, the company in australia do not have an automatic right to the domain extension and therefore any member of the public can purchase it. I reckon you could be okay with the domain and I would register it and make my site.
> Does an EU trademark have any power in Australia ? If you find it through the Australian website then it probably is registered in Australia/worldwide too. So yes it should have power. Doesn't the website where you found it should have a faq explaining this more in detail ? Or say in what territories the trademark is active ? > If i registered the .com.au domain name and created a site that had nothing to do with what the existing > company sold or did would that be ok ? It depends. Trademarks have categories (goods and services descriptions) - so you have to check in what categories it's registered and the company is active in. If they are also registered in categories like 'news' or 'sports' then you probably are out of luck and they could fight you, even though they have nothing similar on their homepage at the moment. If they only have categories like computer games, .. then you are ok.. But if you really want to be sure then also register the trademark in your name in the categories you will use it for.