Intellectual Property – International

Introduction

In January 2012 the Internet Corporation for Assigned Names and Numbers (ICANN) began allowing organisations to apply for new generic top-level domains (gTLDs) that will operate alongside the 280 country code top-level domains (eg, ‘.com’ and ‘.co.uk’) and the 22 existing gTLDs (eg, ‘.biz’ and ‘.info’). Around 1,400 applications for gTLDs have been received by ICANN – 800 of which are intended solely for use by the corresponding applicant (eg, they are in the ‘.companyname’ format) and 600 of which are intended to be open for industry or interest group use, meaning that they will effectively operate as domain name registries (eg, ‘.bank’ or ‘.sport’).

The initial application process for new gTLD registries has now closed and attention has shifted to how trademark owners can protect against third parties registering their brands as domain names under each independently run registry.

It is against this background that the Trademark Clearing House (TMCH) opened for business on March 26 2013. The TMCH operates a central database in which brand owners may register their trademarks in an attempt to protect their brands proactively in relation to the new gTLD registries.

Benefits

The basic fee for registration, with reductions for larger trademark portfolios, is relatively inexpensive, at $150 for each trademark for each year. There are two main benefits of registration:

  • TMCH registrants are given a 30-day ‘sunrise period’ (before the live launch of any given gTLD) in which to register a domain name that matches their trademark exactly. For example, Samsung would have the exclusive right to register ‘samsung.shop’ (but not ‘samsang.shop’).
  • For a period of at least 60 days after the launch of a new gTLD registry:
    • applicants for domain names on a new gTLD will be warned if they apply for a domain name that matches exactly a TMCH-protected trademark; and
    • TMCH registrants will be notified when such applications are made. If the applicant proceeds despite the warning, there is a quick and relatively inexpensive alternative to Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings (at a cost of £200 to £350) which allows registrants to seek to suspend the applicant’s domain name; unfortunately though, unlike UDRP proceedings, it cannot compel the applicant to transfer the applicant’s domain name.

Limitations

However, the TMCH comes with the following limitations:

  • The TMCH regime will not protect against ‘typosquatters’ – brand owners will receive notifications only for exact matches to the trademarks that they registered with the TMCH.
  • The TMCH will not guard against domain names containing a trademark as well as other words – for example, ‘Samsungphones.shop’, unless SAMSUNGPHONES is a registered trademark and has been registered with the TMCH.
  • Only trademark registrations (and not pending applications) may be registered with the TMCH.
  • The trademark claims period is for a limited time only – it is envisaged that there may be a spike in infringing applications after the protection periods close.
  • On top of the costs of registration, brand owners will still have to pursue applicants through whichever disputes regime applies to that gTLD.

Is it worth registering your trademarks?

Brand owners will need to weigh up the benefits and limitations when considering whether it is worth registering with the TMCH. As a general rule, brand owners should consider protecting their trademarks at the TMCH, just as they should consider putting in place other protection measures in respect of their trademarks, such as watch notices.

However, the TMCH regime is not for everyone and it is likely that bigger companies with a large portfolio of trademarks – and which have the resources to pursue infringers – will be more likely to put such protection measures in place. Certainly, the TMCH registration fees look like a good value against the cost of acquiring domains from third parties later down the line.

Those companies that do not have the resources for the TMCH regime can take comfort from the way in which many internet users now browse the web. Many users no longer type in web addresses, instead using search engines (eg, Google) to pinpoint the business for which they are searching. In turn, Google utilises a wide range of data (eg, site popularity, advertising, key words) rather than domain names alone to rank sites in their search results. On this basis, resources for smaller companies may better be spent on Google optimisation and/or advertising to ensure that consumers arrive at the company’s site before anyone else’s – this is especially true, given the limited scope and shelf life of the trademark claims period.

 

 

http://www.internationallawoffice.com/newsletters/detail.aspx?g=64bcc9ca-d627-4cb1-93b1-3d524ad51734

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