DOMAIN SHIELD PTY LTD [2014] ATMO 30

Application for registration of the trade mark DOMAIN SHIELD in relation to business services and services relating to the ‘compilation, creation and maintenance of a register of domain names’ was initially refused on the basis that other trader already use the term DOMAIN SHIELD in relation to ‘a product that conceals or shields the personal details of a registrant which are usually publicly available with a registered domain name’.

The applicant requested to be Heard on the matter and provided some evidence of its use of its trade mark.  However, the Hearing Officer noted that the evidence was flawed and largely the evidence provided was use after the filing date, which would not be of assistance in relation to a section 41(6) objection.

In an interesting twist, the applicant attempted to overcome the objection by deleting the objectionable services.  However, the Examiner (later affirmed by the Hearing Officer) took the view that such a limitation would only lead the application to fall foul of section 43 on the basis that it would mislead or deceive consumers into thinking that certain services were being offered under the trade mark.

The application was refused registration.

To view the Office decision, click here.