Trademark Clearinghouse opening soon

Wednesday 13th March 2013

With the first new global Top Level Domains (gTLDs) due to go live from the middle of this year,[1] the Internet Corporation for Assigned Names and Numbers (ICANN) has announced that the Trademark Clearinghouse will start operating on 26 March.  The Trademark Clearinghouse is the first global repository for trademark data in the domain name space.[2]


As we mentioned in our last update, the Trademark Clearinghouse will be provided by Deloitte Enterprise Risk Services and IBM.  Deloitte is responsible for trade mark validation, while IBM will manage the database, providing relevant data to the registries and registrars for Sunrise and Trademark Claims services.

The Trademark Clearinghouse protects brand owners from new gTLDs that might infringe their marks.  Owners are able to record:

  1. Nationally or regionally registered trade marks;
     
  2. Court-validated marks; and
     
  3. Marks protected by statute or treaty.
     

The recently published Trademark Clearinghouse Guidelines provide extensive information as to what marks can be lodged, and what information a brand owner must supply.

The Trademark Clearinghouse has two functions.

First, it provides “Sunrise services”.  “Sunrise” is a period of at least 30 days before domain names are offered to the general public.  Trade mark holders who have signed up to the Trademark Clearinghouse will be notified if a new gTLD matches their trade mark and will be given the option to reserve the domain name for themselves.  Every new gTLD is required to have a Sunrise Period.

Secondly, the Trademark Clearinghouse provides a Claims Service.  After the expiration of the Sunrise Period, the Claims Service will send an automatic notification to a trade mark holder who has signed up, if another party applies to register a domain name that directly matches the trade mark.

The protection provided by the Trademark Clearinghouse is not absolute.  It it is only direct textual matches with trade marks that will be flagged.  The Trademark Clearinghouse Guidelines describe this as the Identical Match Rule.  So, for instance, if there is an application to register a domain name of which only a part corresponds to a registered trade mark, the applicant will probably not be prevented by the Trademark Clearinghouse’s procedures.  In this regard, traditional watching services are more helpful, especially for owners who simply want to protect their current brands and domain names.

Nevertheless, the Trademark Clearinghouse is an important tool for trade mark holders who wish to reserve the right to register gTLDs that correspond with their marks.  With registrations for a single trade mark costing from $US150 for one year, up to $US750 for five years, it is likely to be a useful means of brand protection.
 


[1]“New top-level domains to go live starting mid-2013: ICANN”.  Associated Press, 26 February 2013.
[2]“ICANN’s Trademark Clearinghouse to Provide Unprecedented Protections in the Domain Name Space”.  ICANN News Alert, 25 February 2013.

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