Mallesons Stephen Jaques
Confidential communication
 
My understanding is that ASIC will accept any name for registration (other
than some names on "prohibited" type list) unless it is identical to one
already registered.  ASIC does not undertake trade mark searches and leaves
rival claimants to resolve the matter themselves.

That is exactly what happens with domain names (much to trade mark owners'
chagrin).  In comparison to cybersquatting, however, people rarely register
companies using other people's well known trade marks.  I can think of two
or three occasions over the last 10 years where this has happened to a
couple of my clients who have been on the receiving end of nearly 100
cybersquatters in the past year alone.  Maybe it's the cost of registration
which is a deterrent, I don't know.  I must say, however, the people who
registered the companies my clients objected to were never so naive, or
brazen, as to say "I could do it and I didn't think it was wrong."  (Again,
I ask why do people think that there is nothing wrong in doing this or it is
all just a bit of a lark?)

On the trade mark system, let me say that the Trade Marks Office does not
claim to be perfect and does sometimes let things through which might be
surprising.  That is one of the reasons why applications get advertised and
there is a period in which the public may object to the application being
registered.  Even after registration, a trade mark can still be revoked on
the grounds that it was wrongly made, or is wrongly remaining in, the
register.  Revocation, however, involves court action.

Warwick A Rothnie
Partner
Mallesons Stephen Jaques Melbourne
Direct line (61 3) 9643 4254
Fax (61 3) 9643 5999


-----Original Message-----
From: Doug Robb [mailto:doug§clarity.com.au]
Sent: Friday, 15 December 2000 3:19:PM
To: dns§auda.org.au
Subject: RE: WIPO and spelling of Domain Names.



Just as an aside - the reason I was surprised about the list
of domains names that have been transfered is that in some
cases the derived words (and numbers even) seemed to me to
be quite remote derivations compared with what the trade
marks office and ASIC would allow themselves.

On reflection however it is the 'bad faith' and subsequent
behaviour of the registrant that has been a critical issue -
not necessarily how close the names were.  ( As Warwick
noted "he who intends to deceive or cause confusion
will be taken to have succeeded.").

So my comments should not be taken to endorse such
behaviour as clearly it shouldn't be allowed.

As a quick example of what I am talking about however
consider the trade mark for the word 'Rubicon' ("Class 9 -
Computer software and 42 programming services") which I have
held since since 1995. 

ASIC let RUBICO PTY LTD, a computer software
and programming services company register as a p/l in 1999
- presumably they don't bother to do trade mark searches!

No problem for RUBICON (N.S.W.) PTY. LIMITED in 1997 
either and whats more suprising that there already
was a RUBICON PTY. LTD registered in late 1994. Also
in WA we have 'Bio Test Pty Ltd' and 'Bio Test (WA)
Pty Ltd) - two different WA companys doing exactly 
the same work!

So multiple company names or minor changes doesn't
seem to bother ASIC (which I find very surprising
but thats another story ....)

Now lets look at trade marks. 

 
In 1998 the trade marks office allowed the registration of
the mark 'r rubico' in 9 and application in 42 is pending
with virtually the same description as mine (Computer
software, programming etc). 

The 'r' however is a graphic above the bold letters 'rubico'
and is not readily recognisable as an 'r' so the mark
acutually reads 'rubico' with a graphic above it.

Since their company name is 'Rubico' then of course they
want 'rubico' as the dominant feature and the 'r' is a
device to slip the bolded Rubico past the examiner.

Now there are only 9 registered rubicon trademarks actually
on the database so its not like they had a lot of work to do
to figure this out. 

Now I'm not complaining, they make their decisions' based on
their professional judgement and current policy however I
hope 'WIPO' will consider spelling issues in line with what
seems to be common practice both at the trade marks office
and (in our case) the Australian Securities and Investment
Commission (ASIC) in cases where its not a blatant case of
bad faith. 


regards doug

-----------------------------------------------------------
Doug Robb
Clarity Software Pty Ltd      http://clarity.com.au
GPO Box 763                   Phone: 0403 02 2527
Nedlands 6909                 Fax:   (618) 93867564
Australia                     email: doug§clarity.com.au
-----------------------------------------------------------


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