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Digital news

What trademark owners need to know

17 Apr 2013 08:52
The Trademark Clearinghouse came into effect on 26 March 2013 and could reportedly benefit trademark owners by granting them preferential rights to domain names and alerting trademark owners to any third party applications to register the same trademark.
Vicky Stilwell Director in ENS's Intellectual Property department at ENS (Edward Nathan Sonnenbergs), explains that the Trademark Clearinghouse was established by the Internet Corporation for Assigned Names and Numbers (ICANN).

"The Trademark Clearinghouse will be operated jointly by Deloitte and IBM, and it has been described as both a 'centralised repository' and a 'single database of validated trademarks'," she says.

According to Stilwell the Clearinghouse will deal with online infringement and cyber-squatting that could occur as a result of some 1,900 Generic Top Level Domains (gTLDs) that are likely to be launched during the course of 2013, some as early as May.

Included amongst these gTLDs are .accountant, .attorney, .capetown, .finance, .news, .shop and .zulu. For example, a bank might want to register its trademark as a second level name (a domain name) under the gTLD .bank, or that a company operating in Africa might want to register its trademark as a domain name under the gTLD .africa.

What registration is, and isn't

For an annual fee trademark owners can register their trademark with the Trademark Clearinghouse for a period of 1, 3 or 5 years. Stilwell says it's important to 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.

Stilwell says registration with the clearing House will enable the trademark owner to make use of two special mechanisms that have been created. Firstly, trademark owners registered with the Trademark Clearing House will be entitled to register their trademark as a domain name during the 'Sunrise Period' for each new gTLD.

"This will give them a preferential registration right, as they can register their trademark 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," she explains.

Secondly, trademark owners will be notified of any third party applications to register the same trademark as a domain name that occur during first 90 days of general registration for each gTLD.

Proof required

"This obviously puts trademark owners in a position to take whatever competitive or legal action that they feel is appropriate," says Stilwell.

Stilwell explains that in order to register your trademark with the Trademark Clearinghouse trademark owners need to submit proof of trademark rights. Furthermore, she says only one application will be required in order to cover all the new gTLDs, so, for example, a financial services company or trademark owner will not need to register separately for .bank and .finance, or, indeed, all those other gTLDs that may suggest financial services.

"We recommend that clients register as soon as possible, because registration isn't automatic. Validation of the rights is part of the process and can take some time. The cost of registration will depend on the number of years for which you register. In additions, trademark owners should consult with IP lawyers and have their trademarks registered with the Trademark Clearinghouse on their behalf to ensure that all the correct documentation is in order," she says.

According to Stilwell, Legal advisors will also be able to co-ordinate all the third party registration notifications that come in.
    
 
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