The Trademark Clearinghouse came into effect on 26 March 2013. What exactly does this mean? Well, as you might know, some 1900 Generic Top Level Domains (gTLDs) are likely to be launched during the course of 2013, some as early as May. Included amongst these are .accountant, .attorney, .capetown, .finance, .news, .shop and .zulu. It’s self-evident that a bank might want to register its trade mark as a 2nd level name (a domain name) under the gTLD .bank, or that a company operating in Africa might want to register its trade mark as a domain name under the gTLD .africa.
With new opportunities, however, come new risks, and in this case they take the form of online infringement and cybersquatting. To deal with these issues, the Internet Corporation for Assigned Names and Numbers (ICANN) has established a Trademark Clearinghouse. The Trademark Clearinghouse will be operated jointly by Deloitte and IBM, and it has been described as both a ‘centralized repository’ and a ‘single database of validated trade marks’.
The Trademark Clearinghouse works as follows: for an annual fee, you - the trade mark owner - can register your trade mark with the Trademark Clearinghouse for a period of 1, 3 or 5 years. Please note that registration with the Trademark Clearinghouse is not the same as domain name registration, in that it does not create any rights or prove any rights. What it does do is enable you to make use of two special mechanisms that have been created. These are as follows:
- If you register with the Trademark Clearinghouse you will be be entitled to register your trade mark as a domain name during the so-called ‘Sunrise Period’ for each new gTLD as and when it comes into effect. This will give you a preferential registration right, in that you will be able to register your trade mark as a domain name before the general public put in their applications. This is seen as a significant benefit by many companies, and one report suggests that six out of 10 major consumer brands see this as something they want to participate in.
- If you register with the Trademark Clearinghouse, you will be notified of any third party applications to register the same trade mark as a domain name that occur during first 90 days of general registration for each gTLD. This will obviously put you in a position to take whatever action you feel is appropriate.
In order to register your trade mark with the Trademark Clearinghouse you will need to submit proof of trade mark rights. Only one application will be required in order to cover all the new gTLDS, so, for example, if you’re in financial services you won’t need to register separately for .bank and .finance, or, indeed, all those other gTLDs that may suggest financial services. We recommend that you register as soon as possible, because registration isn’t automatic as validation of rights is part of the process. The cost of registration will depend on the number of years for which you register.
At ENS we can obviously register the trade marks that you wish to register with the Trademark Clearinghouse on your behalf. In fact, we strongly suggest that you entrust registration to us because we are well placed to put together the documentation that’s required – the registration certificate, possibly the renewal certificate, and the declaration of use and sample of use in the case of a Sunrise Period application. We can also co-ordinate all the third party registration notifications that come in.
The extra mile
ENS can, however, do far more than simply act as a registration agent. It’s clear that it’s going to be very difficult to keep track of all the launch dates and Sunrise Periods, so we also offer our clients free access to a service that allows users to devise a clear gTLD strategy: one which tracks gTLD launches and Sunrise Periods; one which suggests which domain names should be registered and when; and one which submits trade marks to the Trademark Clearinghouse and processes Sunrise Period applications.