In a long fought battle which has been through the Federal Court, Full Federal Court and now the High Court, AFACT’s appeal against iiNet’s earlier wins, has been denied.

In an unanimous decision, the High Court denied the AFACT appeal.

More to follow.

Daniel Goncalves a Union County man has been sentenced to a term of 5 years imprisonment for the theft and sale of the domain name P2P.com, in what is believed to be the first domain name theft case of its kind.

It was alleged that in 2006 Goncalves gained unauthorised access to an AOL email account operated by the registrant of P2P.com, in order to authorise a transfer of the domain name. Once the name was transferred Goncalves apparently sold the domain name on Ebay for $111,000. He was later arrested on 30 July 2009 and was indited for a range of offences including computer theft. He plead guilty to those charges in 2010 and was this week sentenced.

The domain name has been returned to its rightful owners and the Court ordered that Goncalves pay an amount in restitution to the victims.

In September 2011, the adult industry will get its own internet ‘red light district’ when the new .xxx top-level domains become available for registration.

ICM Registry, which has been approved by ICANN to administer the .xxx TLDs, has announced a pre-registration ‘sunrise’ period, starting on 7 September 2011 and running for 30 days.
In Sunrise A, members of the adult entertainment industry will be able to pre-reserve their desired .xxx domain names.

In Sunrise B, which will run concurrently with Sunrise A, trade mark owners in non-adult industries will be able to pre-emptively block the registration of a .xxx domain name that matches their trade mark. It’s a defensive measure that ensures that a brand is not associated with explicit or adult-oriented content by removing the associated .xxx domain name from the pool of domain names able to registered.

The important points:
To pre-emptively block a .xxx domain, trade mark owners must file a Sunrise B application between 7 September 2011 and 7 October 2011.
A one-time fee is payable for a filing a Sunrise B application (not yet finalised but expected to be around US$200 to US$300.
The blocked domain name must be the exact match of a nationally registered trade mark – e.g. trademark.xxx can be blocked but not trademark-porn.xxx.
While Sunrise B is the only way a trade mark owner can pre-emptively opt-out of the .xxx domain space, there will be post-Sunrise mechanisms that trade mark owners can use to protect their brands (in addition to the existing UDRP process).
Sunrise B opens soon and will run for a very limited time. Contact trademark lawyers to take advantage of this one-time opportunity to pre-emptively keep your valuable brands out of the .xxx neighbourhood.

We are currently working on some new business law articles and hope to bring them to you shorty.

If you have a special request for a business law article please let us know.

The Businesslaw.com.au Team

Grow your leads and sales at Business.com.au. Trial us for 30 days for only $1 (normally $97)

By Trevor Choy – Principal, Choy Lawyers

Over 70% of Australian business names or logos can be copied with impunity. Brand protection lawyer Trevor Choy explains why and how to prevent this.

It is often possible to steal customers of a business by using a visually similar name or logo. Copying is very common in business.

Can your business be copied?

Are your names and logos registered as trade marks?

In a practical sense, the only way to stop copying is to have a registered trade mark. This means you will have been issued with a certificate and you will be entitled to use the symbol ®.

All other options are generally too expensive (I have seen them cost tens of thousands to hundreds of thousands) and the chances of success are horribly low.

This is the case whether you are trying to protect a name or a logo.

But I have registered a business name? Isn’t that enough?

Registration of a business name has little or no effect on someone copying it. The first problem is that name registries are state based, so you may have registered your trading name in New South Wales, but someone could easily register the same name in Queensland (and be legally entitled to use it).

Second, registration of a business name does not convey any legal rights. The main purpose of business name registration is to comply with government requirements. The government wants to know who is using what name in business. That’s why they insist that you register it. There is nothing to stop someone from using an identical or very similar name. Registration of a business name gives you no protection rights.

What about Pty Ltd company names?

The same applies for company names, except that the database is maintained on a national basis, so while you won’t have the ‘someone registered the same name in another state problem’, the main problem of copying remains unsolved.

Registration of a company name still does not stop someone from using a very similar name.

In fact, it is possible for them to register any name as long as it is not 100% identical, even if it is very close to yours. You may have registered Performance Accounting Pty Ltd, and they may be able to register Performing Accounting Pty Ltd.

Trade mark registration takes precedence over all of these.

According to the Australian Securities and Investments Commission website, “if your company name… is identical or similar to a registered trade mark, you could be sued for infringement”.

In other words, registering a company name doesn’t even mean that you can safely use that name if you don’t also have it registered as a trade mark. You can still be sued.

You can see how important trade mark registration is.

Cybersquatting

In recent years, as the internet becomes more popular, businesses have been fighting over ownership of domain names.

In the USA, Madonna had to fight someone who registered Madonna.com and linked it to a porn site, and in Australia, a cybersquatter registered coles-myer.com and linked the page to that of rival Woolworths Ltd.

Harder to solve are claims by two or more legitimate claims. Who is entitled to acme.com.au, Acme Enterprises in Sydney or Acme Solutions in Darwin? Both may be genuine businesses.

The law has turned to the trade marks register for help.

If you own a registered trade mark, you are more likely to be treated as having a genuine claim, and may can more easily regain control of domain names.

Tell me again – so how do I protect my name and logo?

Register your name and your logo as trade marks. You should get the help of a suitably qualified trade marks lawyer – it’s not an over-the-counter process, and there are some traps for the unwary, so make sure it’s done properly.

Trevor Choy is the principal of Choy Lawyers, ranked as a Leading Lawyer for Intellectual Property Law in all Asialaw surveys since 2006. He has been a member of the Federal Government’s Advisory Council on Intellectual Property, advising three key ministers. He has been interviewed by the Age, Sydney Morning Herald, Herald Sun, Channel 9′s Small Business Show, Channel 7′s Today Tonight, Radio National and Robert Gottliebsen for Business Daily, as well as a number of specialist publications. More information is available at www.choylawyers.com.au