On 26 March 2013, the Trademark Clearinghouse, which supports the key brand protection measures for ICANN’s new gTLD program, commenced operating.

To review previous updates on ICANN's new gTLD program see our IP Watch articles here and here.

The Clearinghouse is a centralised repository of trade marks operated by Deloitte Enterprise Risk Services. Once a trade mark is submitted, the Clearinghouse will verify the information provided. For example, the Clearinghouse would need to verify that a mark submitted as "an Australian trade mark" is in fact registered in the jurisdiction under the Trade Marks Act 1995. Unregistered trade marks may also qualify for inclusion in the Clearinghouse provided they have been "validated" by a court.

The Clearinghouse underpins the two major brand protection measures for new gTLDs provided for by ICANN:

  1. The Sunrise Service - which allows brand owners to register trade marks in the Clearinghouse as domain names in a new gTLD (30 days) before registrations in the gTLD are open to the general public.
  2. The Trademark Claims Service -  which ensures that a notice is given to an applicant for a domain name where that name is identical to a trade mark in the Clearinghouse. Notice of the fact that an application has been made is also given to the trade mark owner.

The "basic fee" for registering a single trade mark in the Clearinghouse is:

  • US$145 for one year;
  • US$435 for three years; and
  • US$725 for five years.

Reduced fees are available for registering large trade mark portfolios.

It is anticipated that the first new gTLDs will go live later this year. Accordingly, brand owners should now start registering trade marks in the Clearinghouse.