- Professional News
- 14 February 2013
What is the Trademark Clearinghouse?
In connection with the introduction of new top-level domains by ICANN - previously referred to at our website in June 2012 - various rights protection mechanisms are available. One of these is the so-called Trademark Clearinghouse, which is currently much discussed.
Trademark owners may have their trademarks registered with the Trademark Clearinghouse against the payment of a fee. Upon registration, the trademark owner will benefit from various services, which are particularly relevant in connection with the registration of second-level domains under the new top-level domains.
Examples of rights that may be registered with the Trademark Clearinghouse are registered trademarks and certain other trademarks protected by law, for instance court-validated trademarks.
When an administrator enters into an agreement with ICANN on the administration of a new top-level domain, the administrator is obliged to use information from the Trademark Clearinghouse in connection with Sunrise and Trademark Claims services.
A trademark registered with the Trademark Clearinghouse will be covered by Sunrise service if the owner is able to prove that the trademark is in use.
The administrator must offer Sunrise registration for a minimum of 30 days. Only upon expiry of the 30-day Sunrise period may the administrator sell second-level domains.
The trademark owner will be notified of any applications made for registration of a second-level domain which is identical with the trademark registered with the Trademark Clearinghouse during the Sunrise registration period.
Under Danish law, the obligation of use does not begin until after five years. Accordingly, a number of Danish trademark owners who have a valid registration in Denmark will not be covered by Sunrise service as they have not yet put their trademarks to use.
Trademark Claims service
A trademark registered with the Trademark Clearinghouse is covered by Trademark Claims service, and here no proof of use is required.
The administrator must offer Trademark Claims service for at least 60 days after the administrator in question has started to sell second-level domains under the top-level domain administered.
In the event of application for a domain name which is identical with a trademark registered with the Trademark Clearinghouse, the registrant will be notified of the existing trademark.
If the domain name is registered anyway, the owner of the identical trademark will be notified of the domain name registration after it has taken place. This makes it possible for trademark owners to protect their interests.
It is worth considering the use of the Trademark Clearinghouse as part of the protection of important trademarks. However, the protection offered by the system is time-limited and only applies to domain names identical with the trademark. Thus, the Trademark Clearinghouse offers no absolute protection.