Trademark Clearinghouse and the 'Generic Top Level Domain Programme'

Posted by Jill Bainbridge on
The Internet Corporation for Assigned Names and Numbers (ICANN) has, for the past 7 years, been looking to expand the current domain name system. This has resulted in what has become known as the 'Generic Top Level Domain Programme.'

Previously, domain names could only be registered with reference to a country or other geographical location (for instance .co.uk). Following the introduction of the new programme, hundreds of domain names are now coming to market in arguably the biggest development the internet has seen in recent years. Domain names can now be registered in relation to specific industries (e.g. .construction & .technology) or even specific product types (e.g. .lighting & .bike). We anticipate that over 1,000 new domain extensions will become available over the next 3 years.

Trademark Clearinghouse launched in Summer 2013 in response to this new programme. Its purpose is to protect the rights of trademark owners around the world.

Importance of registering

In an age where intellectual property is becoming increasingly valuable, the expansion of the domain name market offers both opportunity and risk for trademark owners. Both individuals and corporate entities are becoming increasingly susceptible to 'cybersquatters,' whereby parties register a domain name with the intent of profiting from the goodwill of someone else's trademark.

Generally, 'cybersquatting' refers to the practice of registering domain names with the intent to sell the names for a profit to another known business. However, some businesses may also choose to register a domain name for the sole purpose of limiting their competitor's exposure to the market.

How Trademark Clearinghouse works

Trademark Clearinghouse protects the rights of trademark owners in two ways:

SunriseProtection

Members will be notified in advance each time a new domain extension becomes available. This allows owners to jump the queue and register their trademark as a domain name before the domain extension becomes publicly available.

Claims Protection

Third parties will be notified of a member's trademark prior to registering the domain. In turn, members will be notified (and provided with contact information for the third party) should the third party proceed with their registration.

How our team can help

Our team provides a dedicated service for Trademark Clearinghouse registrations, covering both the initial filing and subsequent monitoring of your mark. The costs of our services appear below:

Our fees - registration and monitoring (per annum): £150 plus VAT

Our fees - preparing specimen of use (if required): £350 plus VAT

Official fees (per annum): £165 inc. VAT

About the Author

Heading up the firm’s Intellectual property group and Trade Mark prosecution team, Jill specialises in IP and IT disputes.

Jill Bainbridge
Email Jill
023 8085 7160

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