ICANN Launches Trademark Database in Prep for TLDs

ICANN just launched a brand database for trademarks, Trademark Clearinghouse (TMCH), allowing businesses to register their brands ahead of the release of the next wave of 2,000 generic top-level domains (gTLDs) to be introduced later this year, part of a larger effort toquell concerns about cyber-squatting and trademark infringement as seen in this introductory video:

Suffixes such as .bet, .web, .news, .app, .home, .inc, and .gay will become available in May as alternatives to the current and familiar .com, .org and .net. Some 1,200 gTLDs are expected to be approved—up from the current 280.

“So, for example, if someone applies for the suffix Apple, Apple will be able to see what the website is selling—whether it is a local orchard or someone selling fake Apple computers,” saidJonathan Robinson, a consultant on the project. “New top-level domain names present a land of opportunity, but there are also threats. Prior to this there has been no universal protection available to brand owners. This goes a long way to mitigating the threat.”

Brands leveraging the TMCH, overseen by Deloitte, will pay fees between $95 and $150 per year per trademark record to buy a “pre-launch opportunity” and access to the service for a warning when anyone registers matching domain names.

“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,” said Jan Corstens, Partner, Deloitte in a statement.

Jason Rawkins, partner at law firm Taylor Wessing’s trademark group, begs to differ.

“This has been set up for the right reasons, but it is somewhat lacking in teeth,” he told the BBC. “Businesses may think they are protected, but this is purely a notification system and it will only notify you if someone registers an exact match, for example Pepsi. But if someone registers Pepsi Cola you wouldn’t be told.”

ICANN began accepting applications for customized or generic TLDs last year and announced a 9 to 12 month period before they go live.

Before the TMCH, brand owners protected their IP by buying up their property in all of the top-level domains. “They had to go to each and every TLD and register them individually to protect them,”said Jonathan Robinson, a consultant working with Deloitte. “What this does is, for the first time, to create a single repository of registered trademarks.”

Corstens said TMCH is not a “silver bullet” that will eliminate trademark infringement and dispute, but “offers a lot of value, but can it be even more, yes. Hopefully there will be additional things on top to offer even more protection. [For now] it is something that will help IP owners save money and have a centralized and efficient way of getting the protection they need anyhow.”

The new TLDs have already stirred controversy from applications including Amazon’s bid for the .book suffix and Google’s for .search.

Meanwhile, earlier this week, Google quietly announced a significant update to itsAdWords trademark policy, lifting a restriction on using trademarks as keywords in campaigns in many countries including China, Hong Kong, Macau, Taiwan, Australia, New Zealand, South Korea and Brazil, beginning April 23.

“The change means that the Google AdWords trademark policy for keywords in ad campaigns is now harmonized throughout the world,” notes TheNextWeb. “That means a company like Nike can start running AdWords campaigns based on search terms like ‘Adidas’ or ‘Reebok’ starting April 23, even in countries like China or Brazil where it was restricted to do so up until now.”




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