The launch of ICANN's new generic Top Level Domain (gTLD) program later in 2013 presents various threats and opportunities for brand owners. To overcome the threats associated with the gTLD program, trade mark owners should consider the protection offered by Trademark Clearinghouse (TMCH), which went live on 26 March 2013.

In short, the TMCH is an institution designed to protect brand owners during and post the launch of the gTLD program. The TMCH will benefit trade mark holders by providing:

  • Access to Sunrise periods: for 30 days after the launch of each new gTLD, trade mark holders will be given the possibility to register second level domain names before they are offered to the public for registration.
  • Notifications when a domain name including their trade mark is registered by a third party: for 60 days after the end of the Sunrise periods, the new gTLD registry must notify trade mark owners who have made a TMCH filing if a third party attempts to register a second level domain identical to the trademark recorded in the TMCH.

Now is the time for brand owners to consider Clearinghouse filings as part of their online brand protection strategy. Brand owners should also consider what second level domains within the new gTLDS (if approved by ICANN) they wish to register and determine the key trade marks to be recorded in the TMCH.

DLA Piper is actively advising clients in this area, and would be happy to assist you with TMCH filings or any legal aspect of the gTLD rollout. For further information on the TMCH, please click here.

Should you have any questions in relation to the TMCH or the new gTLD program, please do not hesitate to contact us.

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