29.8. Internet Domain Names

Date Published

Internet domain names are typically a combination of standard address code material and an identifier. Standard address code material (such as "www", "net", "org", "com", "shop" or "au" and punctuation symbols "." or "/") points to directories, sub-directories and servers and is common to many domain names. An identifier may be an individual's name, an existing trade mark, a company name, a product name, a topic or any other combination of letters and numerals and is unique within any given domain name registration system.

The registration of Internet domain names is managed by various registrars, each accredited by either the Internet Corporation for Assigned Names and Numbers (ICANN) or a national country code top-level domain authority. In Australia auDA (.AU Domain Administration Limited) is the policy authority and industry self-regulatory body.

A section 43 ground for rejection will apply if the applicant for a trade mark consisting of, or containing, material likely to be viewed as an Internet domain name is not also the registrant or authorised user of that Internet domain name. Consumers are likely to believe that the applicant is the registrant or authorised user of the Internet domain name connoted within the trade mark, and on this basis be deceived and confused if in fact this is not the case.

A section 43 ground for rejection will be reconsidered if it is established that the applicant is the owner or authorised user of the Internet domain name reference.


​​​​​​​8.1 Top Level Domain Names


Top level domain (TLD) refers to the last segment of a domain name. TLDs are mainly classified into two categories: generic TLDs (for example .org) and country-code TLDs (for example .au). A generic TLD may however include any wording following a dot (.SOMETHING).

In the case of a generic TLD, the trade mark application needs to be holistically considered, including the relevant specification, when determining whether the material (.SOMETHING) is likely to connote a generic TLD.

If it is clear that such a connotation exists, the examiner should then consult ICANN's list of generic TLD applications. If the generic TLD referred to in the trade mark appears on ICANN’s list and is not under the status ‘Withdrawn’, ‘Not Approved’ or ‘Will Not Proceed’, then a section 43 ground for rejection should be raised in the first instance if the applicant is not also listed as the registrant of the generic TLD application.


​​​​​​​8.2 2nd level and Sub Domain Names


2nd level domains commonly include an organisation reference and a TLD. For example: (SOMETHING.COM) where something refers to the organisation and com the TLD.

A subdomain is a subset of a domain name and may refer to a specific section of an organisation’s website. For example: (SHOP.EXAMPLE.ORG) where shop refers to the subdomain (where a user can access an online shop) and example.org the domain name (including the TLD .org).

A section 43 ground for rejection will apply if the applicant for a trade mark, which connotes an Internet domain name (including a 2ND level domain / sub domain), is not the registrant or authorised user of that Internet domain name.


​​​​​​​8.3 Radio Call Signs and Frequencies


Radio call signs and frequencies are governed and administered by the Australian Communications and Media Authority (ACMA). People who want to operate a radio station have to apply to ACMA and are governed by their rules.

In Australia Radio call signs are quite specific, and indicate the state/territory and whether the frequency is AM or FM (two letters for AM, and three for FM). Also, radio broadcasters who wish to apply for a license with ACMA to operate can choose a call sign, but if they do not then the ACMA provides one - and radio broadcasters don't choose the frequency (according to the ACMA's website this is chosen for the broadcaster by the ACMA). Every broadcaster/radio station has to use a different radio call sign.

Some examples of radio call signs are 1CBR, 2CA, 4CCR.

A section 43​​​​​​​ ground for rejection will apply if the applicant for a trade mark containing a radio call sign or frequency, in class 38 for broadcasting or related services, is not also the licensed owner/operator of a radio station with that radio call sign or frequency. This is because confusion would be created if the owner of the trade mark did not in fact have the license to operate with that radio call sign or frequency.

The section 43 ground for rejection will be reconsidered if an applicant provides information confirming that they are the licensed owner/operator of the radio call sign or frequency.

Examiners will also need to consider raising a section 41 ground for rejection in relation to any trade mark which could viewed as a radio call sign or frequency that simply consists of that material or with other descriptive or non distinctive elements.

Amended Reasons

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