In the end of March,the Trademark Clearinghouse (TMCH) was opened, the foundation mechanism for brands to protect their trademarks against potential infringement, ahead of the entry of multiple generic Top-Level Domains (gTLDs) into the Internet later this year. The TMCH is a single database of validated trademarks, and is the only officially authorised solution from The Internet Corporation for Assigned Names and Numbers (ICANN), the body that oversees domain names on the Internet.
Online brand protection in the era of new domains
Operated by Deloitte, who perform the verification services and IBM, as the database provider, the TMCH provides two unique services and recording trademarks in the TMCH is the minimum requirement for brands to benefit from these as new TLDs comes to market. First, recording marks provides brands with the pre-launch opportunity to proactively register domain names which match their trademarks ahead of wider public availability, during the ‘Sunrise’ period of every new TLD – something almost six out of ten of major consumer brands have expressed an interest in doing.
Second, following the launch of each new web extension, for a period of 90 days, trademark holders will receive a warning when anyone else registers domain names that match their marks. This Trademark Claims Service is currently demanded by 60 per cent of major consumer brands. As the cornerstone of the rights protection mechanism built into ICANN’s new gTLD program, the launch of the TMCH will provide assurance to the 96 per cent of major consumer brands that feel that the new domains present a new level risk to Intellectual Property (IP) online.
In fact, almost nine out of ten of major consumer brands have stated they are willing to submit their trademarks to the TMCH. The results are revealed in an independent survey, commissioned by Deloitte and conducted by Vanson Bourne, of 200 global consumer-facing businesses with 3,000-10,000+ employees – regarding their IP provisions in light of the new domain initiative.
Mitigating risks and opening opportunities
While new domains present both risks and new possibilities for businesses, almost 8 out of 10 of brands polled believe that the introduction of the TMCH will help protect their IP online across the new gTLDs moving forward. The assurance that the TMCH provides means that businesses can now focus on the new opportunities the domains offer, such as improved online marketing opportunities and improved customer engagement – a benefit outlined by 8 out of 10 of the brands polled. The research reveals that more than half of the brands (52 per cent) are interested in securing domains relating to their trademarks for geographic domains, such as .SCOTLAND or .AFRICA and the opportunity to reach international communities via international domains (domains presented in foreign language scripts) are an attraction to 6 out of 10.
The results of the survey show that businesses are gearing up the launch of the TLDs in order to benefit from the advantages they offer, however they also need to ensure they have adequate protections in place to defend their brand online. It is remarkable that one in five of top 200 brands still have little or no awareness of the new domains, which also means they are unnecessarily exposing themselves to trademark infringement. Recording marks into the TMCH is the most effective way to ensure that IP is appropriately safeguarded across all of the new web extensions that will go live this year.
The TMCH is open to any trademark holder – whether a private individual or company – and is without geographical limitation. Trademark holders will only have to submit marks once, which will then give access to the rights protection mechanism across all of the new domains being launched. Prices range from US$95 to US$150 per year per trademark record per year, depending on the number of trademarks submitted and their registration period in the TMCH.
For more information please visit the TMCH website at www.trademark-clearinghouse.com
About the author
Jan Corstens is Partner at Deloitte.
About the Trademark Clearinghouse
The Trademark Clearinghouse is the centralized repository of validated trademarks for the purpose of protecting brands in ICANN’s new gTLD program. The Trademark Clearinghouse consists of two primary functions: the authentication of contact information and verification of Trademark Records and the storage of such Trademark Records in a database in order to provide information to the new gTLD registries to support the providing of Notifications of Registered Name (NORN). The Trademark Clearinghouse is operated by Deloitte and IBM, in accordance with ICANN policy.
ICANN’s mission is to ensure a stable, secure and unified global Internet. To reach another person on the Internet you have to type an address into your computer – a name or a number. That address has to be unique so computers know where to find each other. ICANN coordinates these unique identifiers across the world. Without that coordination we wouldn’t have one global Internet. ICANN was formed in 1998. It is a not-for-profit public-benefit corporation with participants from all over the world dedicated to keeping the Internet secure, stable and interoperable. It promotes competition and develops policy on the Internet’s unique identifiers. ICANN doesn’t control content on the Internet. It cannot stop spam and it doesn’t deal with access to the Internet. But through its coordination role of the Internet’s naming system, it does have an important impact on the expansion and evolution of the Internet. For more information please visit: http://www.icann.org.
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