March 2013

Clear way for brand protection

Later this year, a large number of new generic top level domains (gTLDs) will be released on the internet, including top-level domain extensions which consist of brand names (.mcdonalds), generic terms (.accountant) or geographic locations (.sydney).  This will be a double-edged sword for brand owners.  While the impact will be positive in so far as brand owners will be able to acquire new domain names to increase the reach and value of their brands, it will also create more opportunity for cyber squatters and domain name hijackers.

Ahead of this expansion of top-level domains, a new global database called the Trademark Clearinghouse has been established to provide trade mark owners with important tools to protect their trade marks.

The Trademark Clearinghouse is about to open for business, so brand owners should now be thinking about their online brand protection strategy and determining which of their trade marks they should record with the Trademark Clearinghouse.

What is a top-level domain or gTLD?

A gTLD refers to the "suffix" at the end of a domain name, for example ".com", or ".net".

Last year, the Internet Corporation for Assigned Names and Numbers (ICANN) launched its new gTLD program which allows anyone (with sufficient resources) to become the administrator of their own top-level domain extensions – for example, McDonald’s Corporation has applied to operate the .mcdonalds top-level domain. 

What is the Trademark Clearinghouse?

The Trademark Clearinghouse is a centralised database of verified trade mark information. From 26 March 2013, trade mark owners (or agents acting on their behalf) will be able to record their trade marks in the Trademark Clearinghouse. 

The administrators of the new gTLDs will then be able to use the information in the Trademark Clearinghouse to provide various notifications to trade mark owners. The types of notifications which they will provide are set out in more detail below.

Why use the Trademark Clearinghouse?

Trade mark owners who record their trade marks in the Trademark Clearinghouse will be able to take advantage of two main benefits:

1.   Sunrise Service

Trade mark owners recorded in the Trademark Clearinghouse will receive at least 30 days’ notice of the impending launch of a new gTLD.   Those trade mark owners will then have the option to register second level domain names matching their trade marks before they are open to the public for registration.

For example, we would be given at least 30 days' advance notice before the new gTLD ".lawyer" is launched, so we can register the domain name bartierperry.lawyer and prevent the registration of that domain name by a third party. 

In order to receive notifications through the Sunrise Service, trade mark owners must provide a signed declaration of use and acceptable "proof of use" of the trade mark when recording their trade marks in the Trademark Clearinghouse. The type of evidence which will be considered "proof of use" includes labels, tags, brochures, catalogues, screen shots, social media marketing materials and press releases.  Only one sample is required.

2.   Trademark Claims Service

Trade mark owners who record a trade mark in the Trademark Clearinghouse will also benefit from the Trademark Claims Service which will be provided for at least 60 days after the Sunrise Period for each gTLD ends. This service operates as follows:

  • a potential domain name registrant will receive a warning notice when attempting to register a domain name that matches a trade mark recorded in the Trademark Clearinghouse.  The registrant will be asked to confirm that its use and registration of the domain name will not infringe the trade mark owner's rights; and

  • if, after receiving the warning message, the domain name registrant continues to register the domain name, the trade mark owner will receive notification of the domain name registration, so they can take any appropriate action.

The automated warning notification given to a registrant of prior rights means that it will be easier for the trade mark owner to prove the registrant's bad faith and succeed in any domain name dispute process – for example, the process set out in the Uniform Domain Name Dispute Resolution Policy (UDRP).

What the Trademark Clearinghouse does not do

It is important to note that recording a trade mark in the Trademark Clearinghouse does not stop others from registering that trade mark as a domain name in any of the new gTLD registries.  The Trademark Clearinghouse is simply a repository of verified trade mark information which provides information to the new gTLD registries in support of notifications for the pre-launch Sunrise Service, and notifications under the Trademark Claims Services.

Recording a trade mark in the Trademark Clearinghouse

You need to be a Trademark Holder or a Trademark Agent who has registered with the Trademark Clearinghouse in order to record a trade mark.

You can then record your trade mark online by submitting: 

  • details of the registered trade mark – including name of the mark, registration number, registration date, jurisdiction, the class and description of the goods and services and details about the trade mark owner;

  • proof of use, which is comprised of a declaration of use (copy attached) and a sample of use (which can be a label, tag, brochure, catalogue, screen shots, social media marketing materials, press releases) – only one sample is required; and

  • payment of the relevant fee.

Fees

The fee payable by a Trademark Holder to record a trade mark in the Trademark Clearinghouse is US$150 for 1 year, US$435 for 3 years or $725 for 5 years.

Next Steps

Trade mark owners should:

  • review their trade mark portfolios and identify which of their trade marks (if any) they wish to be recorded in the Trademark Clearinghouse; and

  • begin compiling the information required for recording their trade marks with the Trademark Clearinghouse – ie. trade mark registration details and a sample of use of the trade mark. Care needs to be taken to ensure that the evidence satisfies the conditions mandated for the Trademark Clearinghouse.

The Trademark Clearinghouse will be opened on 26 March 2013.

Please contact us if you need any further information or help with recording your trade marks in the Trademark Clearinghouse.

Author: Michael Cossetto

 

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