Top 10 tips for your gtld/trade mark strategy

Monday 12 August 2013

The launch of new generic Top Level Domain names (“gTLDs”) is coming soon. This means that we will see the current few domain name endings like ".com" extend to potentially over 1,000 including generic terms such as ".shop", brands such as ".chanel" and places like ".paris". This paves the way not only for increased marketing opportunities for brand owners on the internet but also possibilities for cybersquatters and internet fraudsters.

If you are a registered trade mark owner, you already have both a sword and shield. However, for your armoury to be effective, you need to be in the right position to use them. The following tips should help you avoid panic spending on remedial action during the chaos that is predicted to erupt at the end of Summer 2013.

1. Be Prepared

Review your trade mark portfolio with your advisor on a regular basis. It is always best to go back to basics periodically to ensure your online strategy has solid foundations and that your portfolio is up to the job of following the path you set. In the short term, a review might also help to identify gaps in your protection and assess whether you are carrying marks that are no longer needed. Moreover, it could draw to your attention issues that need to be addressed.

2. Be Resourceful

You will need to budget for both registration and defensive action before and after the new gTLDs come into effect. It is very likely that more investment in trade mark enforcement will be necessary for all brand owners. Plan ahead to make sure you have adequate resources in place.

3. Be Reassured

Invest in registered trade mark protection where gaps have been identified in your portfolio. Your online presence may depend on your portfolio of registered marks, as many of the rights and remedies in the new gTLD system rely on the brand owner being able to present firm proof of the existence and ownership of their trade marks.

4. Be First

Whether it is because you want to take defensive action or be part of the new internet landscape for yourself, consider which gTLDs are really relevant to your business and register your key trade marks in the appropriate gTLD domain name.

You can be at the front of the queue by logging your registered trade mark with the Trade Mark Clearinghouse*. This gives trade mark owners a short period of a few weeks (called the "sunrise" period) in which to grab the domain name that matches their trade mark, before the process is opened up to the public. This pre-emptive measure can prevent cybersquatting and the costs involved in taking action after the event. A cybersquatter would not have the advantage of being part of the "sunrise" period.

5. Be Informed

Defensive registrations for gTLDs can be expensive if you have a lot of trade marks or where many gTLDs could be relevant. In this case, watching is key so you are at least notified of relevant new gTLD applications.

As a minimum you should log your key trade marks with the Trade Mark Clearinghouse*. This will ensure you are sent a warning notice if a third party applies to register a domain name that includes your trade mark. However, this service (called "Trade Mark Claims") only alerts on identical or near-identical matches so you cannot rely only on this if you want a more comprehensive warning strategy. In this case, a subscription to a domain watching service would be recommended.

6. Be Engaging

Educate your staff so all know whose responsibility it is to oversee your domain name strategy and/or trade mark portfolio. They should all know what action to take, the protocol for renewals relating to trade marks and domain names, as well as enforcing and registering them in the first place. By involving relevant departments in your overall gTLD strategy planning you can ensure a consistent approach.

7. Be Forceful

Take action to stop misuse as soon as it comes to your attention. Enforcing your rights in the new gTLD system will be challenging but there are special procedures in place to help brand owners tackle trade mark misuse even before it turns into trade mark infringement.

8. Be Proactive

Look at the gTLD lists to see if there are any that might apply to your field so you can target your watching and identify potential threats or opportunities accordingly. You also need to monitor as new gTLD registries go live as they are expected to be released on a rolling basis as and when they are ready. This might take up to 5 years and each gTLD Registry release will have a "sunrise" and "trade mark claims" period. Even after the last of the gTLDs has opened for registration of domain names, it may be advisable at least to keep watching.

9. Be Wary

Unsolicited communications from third parties are already rife and trade mark owners are no doubt familiar with official looking communications offering to register their UK trade mark in another jurisdiction or to assist with the payment of renewal fees. In previous rounds of Top Level Domain name introductions, domain name registries contacted trade mark owners directly, "advising" that if a third party was trying to register domain names corresponding to their trade mark. In many cases this was just to obtain their business as the solution was to "register it first" and the third party never materialised. However, one day it might be true. Logging your rights with the Clearinghouse and/or subscribing to a watch service through your trusted trade mark advisor will ensure that all the communications you receive through such channels are legitimate.

10. Be Advised

This is a brand new and unprecedented area which is developing daily. As experts in trade mark law, we can help you implement all of these tips and guide you on any trade mark matter that arises during the gTLD process, or afterwards. We have regular news items and you can subscribe to our mailshots that will keep you up to date by contacting Sara Baines or you can speak to a member of the Appleyard Lees Trade Mark team.

Whether it is simply to hold on to your position or to obtain more on-line territory you need to have a plan. We can help you form a strategy tailored to your specific needs, whether you own a couple of national trade marks or a global portfolio of hundreds.

If you are not already a registered trade mark owner, your starting point is to talk to us about trade mark protection, without which you are not only likely to be left behind but also practically defenceless.

*The Trade MarkClearinghouse is an international repository of rights specially set up for trade mark owners to help them combat the risks inherent in the domain name space being opened up to potential misuse. It is already possible to log your trade mark rights with the Clearinghouse and we would advise that you should do so now, before the rush begins.

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