By Trevor Little
June 05 2012
While a less high profile delay than the one that hit the gTLD application process - details of the Trademark Clearinghouse provider had been expected in February - ICANN has finally revealed that it is working with Deloitte and IBM to implement the various clearinghouse services. The news coincides with the release of a new study suggesting some trademark counsel are still ill-prepared for the online expansion. For those who do want to keep up with their reading, a new version of the applicant guidebook was published today.
The trademark clearinghouse will authenticate, store and provide to registries information pertaining to rights of trademark holders, and it has been the subject of some scrutiny by brand owners. The clearinghouse is designed to be available globally, with its authentication and database administration functions separated. ICANN has revealed that “upon the anticipated execution of final agreement(s), Deloitte Enterprise Risk Services (a department of Deloitte Bedrijfsrevisoren BV ovve CVBA) will serve as the authenticator/validator service provider, and IBM [International Business Machines of Belgium sprl / bvba] will provide technical database administration services. Both Parties will subcontract IPClearingHouse BVBA (aka CHIP) in order to facilitate theses services”.
Deloitte's validation team has experience of sunrise validation processes, having previously overseen its implementation in a number of ccTLDs and gTLDs, including ‘.asia’, ‘.tel’ and ‘.co’ (the organisation also drew up the latter’s protected marks list, a concept that ICANN rejected for new gTLDs).
ICANN is now working with the two organisations to build and prepare for operation of the trademark clearinghouse’s services, with both participating in the public discussions that will refine technical and operating specifications.
Details of the clearinghouse operators have been keenly awaited by many in the trademark world. Yet a new survey of US legal professionals (both in-house and in private practice), conducted by Melbourne IT Digital Brand Services (DBS), suggests that there is still work to be done by some in the trademark community in terms of preparedness.
While the study found that 91% of respondents are aware of the new gTLD program and 54% felt that the expanded online space poses a moderate or high risk to their organisation's or clients' online brands and trademarks, only 36% had read the application guidebook and over a third are unfamiliar with the public comment/objection period.
Of course, the third of respondents who are unfamiliar with the comment period could be in the 46% who felt the new regime wasn’t a risk – that they are aware of new gTLDs and, having decided that they are not a risk, have chosen not to engage. In addition, much concern focuses on the second level rather than the top. However, until the June 13 reveal date arrives, the likely need to engage in the objection process will remain unknown – making awareness of the procedures that exist to protect trademark rights important.
For those wishing to keep abreast of the latest changes, ICANN today published a new version of the applicant guidebook. Changes have not been made to the application process, but the section on the objection filing period has been updated.
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