AUSCITY wrote:

> Anyone care to express a considered opinion on this scenario? Or perhaps you
> know of a similar case (with oucome)  you care to share.

(obligatory lawyer's disclaimer) My views are personal, not those of my firm,
and I am not providing legal advice for anyone to rely on; merely engaging in an
interesting theoretical discussion.

>
> Big company 'W-Dog Pty Ltd' trademarks its name, 'W-Dog'.  They register a
> domain name of w-dog.com and w-dog.net

To get a trademark registered, you have to either be using the mark, or intend
in good faith to use it. One of the grounds on which a person can get another
person's trade mark deregistered is non-use for 3 years. This does, however,
require an application to the relevant Tribunal, and is often not a commercially
feasible option.

> On the other side of Australia, a new small business is established and
> calls itself (Reg Business Name) wdog.com.au . wdog.com.au registers the
> domain www.wdog.com.au This business had not seen the W-Dog product because
> it was not publically available or in the marketplace. However it turns out
> that both organisations have much the same idea.
>

Innocence may excuse you from having to pay up big time for past transgressions,
but it will not allow you to keep infringing a registered trade mark once you
know you are doing that. EG, if user A registers first, and is using the mark,
then user B will be infringing the registered mark by applying the same mark to
the same (or similar) goods/services. Looks like small company is doing that
here.

> Big company 'W-Dog' cries foul play and threatens legal action against
> wdog.com.au for breach of trademark.

Understandable. Big companies have shareholders who want their valuable IP
rights protected. Why did small company not check the register to see if that
name had been taken already?

> wdog.com.au has had its product in the market place for many months. Even
> though W-Dog registered its trademark before wdog.com.au was established,
> W-Dog still does not have its product in the market place nor will they
> provide proof of its existance. However their trademark details are written
> so generalised that it could pretty well tie up the whole industry. There is
> still no publically available information on its specific product.
> Apparently, W-Dog says its all very confidential. Plus the domain name of
> www.w-dog.com.au is still available. They have not registered it!

Sounds like Big company may not have registered in good faith. Or may be subject
to removal for non-use (small company would need to take action to do this,
which would involve costs and risks). You would have to get as much info as
possible, an maybe take a "suck it and see" approach if all else fails.

QUESTION: Should wdog.com.au be prevented from using the domain wdog.com.au

> ? Reason being breach of trademark.
>

Based on the Act and your hypothetical facts, yes (but to get out of that
conclusion, small company could apply to have the official register rectified by
removing Big company's registration). This does not mean I applaud the
morals/ethics of the situation - I'm merely adding some data for info.

A big lesson is that people should check the trade mark register as well as
business/company name registers. You can do that online from IP Australia's
website, though it can be a daunting experience for the uninitiated.

Hope that helps.

Mark

>
> Regards,
> Chas Cleland, Manager, AUSCITY
> auscity§auscity.com.au     www.auscity.com.au
> Phone: +61 3 5561 3077
>
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