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OCTOBER 2013
Deloitte
25
Property (IP) protections within the new generic TLD (gTLD) programme. Powered by Deloitte and IBM, the TMCH is essentially a unique, central database of validated trademarks. The Trademark Clearinghouse is the only universal means of an IP owner protecting their trade- marks during the launch and initial period of every new gTLD.
The principal aim of the
Trademark Clearinghouse is to make it easier for brands and businesses to protect their intellectual property across the hundreds of
forthcoming web extensions.
By submitting marks to the Trademark Clearinghouse, brand owners can expect protection of their intellectual property via two key processes; Sunrise and Trademark Claims.
i) Sunrise Period: before the launch of any new gTLD, a Sunrise Period will take place that enables registered brand owners to secure domain names associated with their
trademarks
ahead of wider availability – only IP owners with marks recorded in the TMCH will be eligible to take part in the Sunrise Period
ii) Trademark Claims: any domain name applicant seeking to register a domain (e.g. apple.web or apple.music) corresponding to a brand (e.g. Apple) recorded
in the
What was the thinking behind its inception?
ICANN has committed itself to managing the introduction of hundreds of new gTLDs. Alongside familiar domain extensions such as .com, .org and .co.uk, you can soon expect to see branded, geographic and generic domains such as .nike, .london and .food being used on the Internet.
While new web extensions present great new possibilities for brands, concerns have been raised by the IP community about how trademarks can be protected during this period of significant change online. In order to allay these fears, ICANN set up the Trademark Clearinghouse to offer brand owners unique mechanisms designed to safeguard their trademarks in domain names across the many hundreds of new gTLDs that will soon go live.
What do you hope to achieve with it?
The principal aim of the Trademark Clearinghouse is to make it easier for brands and businesses to protect their intellectual property across the hundreds of forthcoming web extensions. This single solution is designed to ensure that trademark owners do not have to enter their marks, and have these verified, in multiple locations and on multiple occasions. With the Internet on the brink of the biggest expansion in its history, the Trademark Clearinghouse has opened its doors to reduce the risk of intellectual property infringement online.
Trademark
Clearinghouse, will receive forewarning of the clash. Should the domain name applicant opt to proceed with the domain name registration, a Trademark Claims notice will be sent to the trademark holder(s) of the mark (e.g. Apple Computer Corporation or Apple Music), who will then be in the position to take any enforcement action as may be required
do you think that trademark disputes will increase significantly with hundreds of new domain extensions going live later this year?
With the imminent expansion of the domain name system, it is likely that the risks to IP will be exacerbated with the arrival of each new TLD, simply since more opportunities become available for cyber squatters or those who wish to fraudulently market goods and services
online. Where businesses have better learnt how to protect their portfolio of trademarks across the relatively small existing pool of TLDs, managing this process themselves across the launch of every new gTLD could prove a logistical nightmare. Being unprepared for this new chapter in the Internet’s history will inevitably leave trademark holders open to infringement. The most effective way to avoid an increase in disputes is for rights owners to take the necessary steps towards protection as soon as possible.
Is there anything else you would like to add?
Protecting trademarks online is nothing new but the sheer volume of new gTLDs expected to go live over the coming year or so makes the necessity of ensuring marks are protected all the more critical. Where trademark holders have been able to protect themselves on a case by case basis in response to the launch of other gTLDs like .eu, .asia and .xxx, the imminent launch of potentially over 1,000 new domain extensions means the intellectual property community should be proactively entering marks into the Trademark Clearinghouse as soon as possible.
Trademark owners who take the opportunity to be an early bird can avoid the need to rush the registration process. Delaying applications has the potential to leave trademarks unprotected since it can take up to 30 days for submissions to be processed, and more if errors are detected or
re-submissions required.
What’s more, the initial annual period of protection of trademarks in the TMCH will only be counted from the Sunrise of the first gTLD, so by applying now trademark holders will not only avoid a last minute dash to enter, but will also receive an essentially free service for a few months. LM