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JacquiPryor
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Hi Di,

Not sure how I missed this thread when you first posted it! Apologies for that!
I’m hoping to address some things about this ‘situation’ in a general sense should others be along to read:

If your care factor exceeds $2k you could try to pry the domain away from the competitor.

To elaborate a little on Steve’s post – this particular link/dispute resolution policy applies to .au names. There is another policy in place for .com names and the like… In the Australian domain case as Steve noted you must prove all 3 criteria, which can be tricky – and, can be costly.

However it is also possible to file a complaint directly with auDA over certain things without the cost of going through the formal dispute resolution procedure. For example, if you feel the registrant of a .au domain does not actually meet the eligibility criteria of holding the domain. The auDA can handle these sorts of eligibility complaints directly at no fee.

should I just give up or should I invest more money in trying to get my trademark.

Each case will return a different answer to this question, as it’s dependent on various things – most notably, whether you already use the name and if so, how long have you used it for? The sort of issue that Di has described as receiving from IP Australia will allow you to file evidence of use of your chosen trademark (and in some cases also evidence of your intent to use the chosen trademark). If this ‘evidence’ demonstrates that your potentially generic name is used and promoted in such a way it’s become (or will become) capable of distinguishing your goods/services then the mark can be accepted. Preparation of such evidence needs to be in a particular format and contain certain types of information; it can be tricky to get this ‘right’ when it’s unfamiliar so you can engage professional services to assist. Fees would obviously vary depending on the company or firm engaged.

It will be much easier to trademark your logo (if it is authentic) than any words. If you want your chosen words to be included in the trademark just make them part of your logo – that’s what I did and had no problems with IP Australia.

Well said. I will often advise clients to file a logo mark (if they have/use one) rather than generic wording, as it is often easier/smoother to gain registration. This is not always the case though – if your ‘generic name’ is still featuring as the truly ‘main’ component the same sort of issue can still arise – however, it can also be easier to provide the requisite ‘evidence’ based on a logo to overcome the issue if it arises.