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Guest View: Understanding the key offerings of the Trademark Clearinghouse

Jan Corstens | May 21, 2013
Jan Corstens, partner at Deloitte handling the Trademark Clearinghouse, advises businesses on the necessary steps to take leading up to the launch of new Internet domains

Following the Internet Corporation for Assigned Names and Numbers' (ICANN) 46th International Public Meeting in Beijing that occurred earlier this month, a number of intellectual property owners are buzzing with lingering questions and some concerns regarding the rollout of new Internet domains.

Also known as the generic top-level domain (gTLD) programme, the process involves the introduction of hundreds of new domains including branded, general and geographic terms such as .Google, .law and .Africa that will soon exist on the Internet alongside traditional domains such as .com, .org and .gov. Given the fact that one in five of the top 200 brand owners still have little or no awareness of the new domains, it's understandable that this is receiving such urgent focus now.

What is clear is that there needs to be a greater effort to educate and assist brand owners in preparing an intellectual property management strategy for the new gTLD programme. This is part of the job of the Trademark Clearinghouse.

Developed as a result of ICANN's work with intellectual property experts and a range of other stakeholders, the Trademark Clearinghouse is a crucial tool to ensure that trademark holders protect their rights during the expansion of Internet domains. The Trademark Clearinghouse - which officially launched on 26 March 2013 - is the first and most effective step towards securing and defending a brand's intellectual property.

Step One: Understand the basics behind the Trademark Clearinghouse and why it matters for brand owners

The Trademark Clearinghouse offers brand owners a one-stop-solution and the opportunity to take advantage of unique mechanisms designed to protect trademarks across the hundreds of new gTLDs scheduled to go live starting in the summer of 2013.

The launch of the Trademark Clearinghouse marks the first time that there is a single, global repository of registered trademarks, thereby making it much easier for brands to protect their intellectual property within web addresses.

Prior to the Trademark Clearinghouse, brands had to individually record their trademarks with each new TLD in order to take advantage of protection mechanisms.

Step Two: Recognise how registering trademarks with the Trademark Clearinghouse actually protects brands' intellectual property

The benefits of registering a trademark with the Trademark Clearinghouse include prior warning of potentially infringing domain name applicants and notification alerts sent to rights owners when a domain matching a trademark has been registered, thereby both reducing the likelihood of infringement and providing pro-active notification of potential infringements. Additionally, registered trademarks are granted priority access via the Sunrise Period with new gTLD registries.

The services can be define as follows:

a) Sunrise Period: Before the open launch of any new gTLD to the general public, a Sunrise Period will take place that enables intellectual property owners (businesses or private individuals) to secure domain names corresponding with their marks ahead of wider availability. Any business or intellectual property owner wishing to secure a domain name corresponding to their trademarks during this period must have previously successfully recorded the relevant marks in the Trademark Clearinghouse.


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