The new gTLD program, which the Internet Corporation for Assigned Names and Numbers (ICANN) is due to launch in the second half of 2013, will allow domain names to be registered which do not relate to a specific geographic location or country (e.g., .fr ), but to specific keywords, including brand names (e.g. .granada). The program will potentially give trade mark infringers and domain name squatters more opportunity to file abusive registrations and infringe trade mark rights.

To mitigate this risk, ICANN has created the Trademark Clearinghouse (TMCH) to serve as a central international database of trade mark information. If an application is submitted for a new gTLD which matches a trade mark recorded on TMCH’s database, the applicant will receive a notification from ICANN. If the applicant decides to proceed with the registration for the gTLD, ICANN will notify the relevant trade mark owner in order to take appropriate action against the applicant, should they wish to do so.

Marks & Clerk Manchester is now one of the few agents authorised in the UK to manage the registration of trade mark rights in the TMCH on behalf of brand owners. Brand owners can ask the firm’s dedicated team to manage the submission of their trade mark details to the TMCH, even if they have no intention of purchasing a gTLD of their own.

Matt Sammon, Trade Mark Partner at Marks & Clerk Manchester, comments:

"Businesses need to know about the risks that the new internet domain name system will bring. Despite having trade marks on their brands, companies could well find someone else using it in their web address.

"Even if you don’t want a top-level domain name yourself, by registering your details with the Trademark Clearinghouse, it means you will be told when someone else tries to use your name in their new web address, giving you a head-start on protecting your brand rights.

National and international brands need to be alert to the continually emerging risks posed by the internet and to the ways to protect themselves from them."