South Africa: The Trademark Clearinghouse - What Every Trade Mark Owner Needs To Know

Last Updated: 18 April 2013
Article by Gaelyn Scott

Most Read Contributor in South Africa, September 2018

The Trademark Clearinghouse came into effect on 26 March 2013.   What exactly does this mean? Well, as you might know, some 1900 Generic Top Level Domains (gTLDs) are likely to be launched during the course of 2013, some as early as May.  Included amongst these are .accountant,   .attorney, .capetown, .finance, .news, .shop and .zulu.   It's self-evident that a bank might want to register its trade mark as a 2nd level name (a domain name) under the gTLD  .bank,  or that a company operating in Africa might want to register its trade mark as a domain name under the gTLD .africa.
 
With new opportunities, however, come new risks, and in this case they take the form of  online infringement and cybersquatting. To deal with these issues, the Internet Corporation for Assigned Names and Numbers (ICANN) has established a Trademark Clearinghouse. The Trademark Clearinghouse will be operated jointly by Deloitte and IBM, and it has been described as both a 'centralized repository' and a 'single database of validated trade marks'.

The Trademark Clearinghouse works as follows: for an annual fee, you - the trade mark owner - can register your trade mark with the Trademark Clearinghouse for a period of 1, 3 or 5 years.   Please note that registration with the Trademark Clearinghouse is not the same as domain name registration, in that it does not create any rights or prove any rights. What it does do is enable you to make use of two special mechanisms that have been created. These are as follows:

  1. If you register with the Trademark Clearinghouse you will be be entitled to register your trade mark as a domain name during the so-called  'Sunrise Period'  for each  new gTLD as and when it comes into effect.  This will give you a preferential registration right, in that you will be able to register your trade mark as a domain name before the general public put in their applications. This is seen as a significant benefit by many companies, and one report suggests that six out of 10 major consumer brands see this as something they want to participate in.
  2. If you register with the Trademark Clearinghouse, you will be notified of any third party applications to register the same trade mark as a domain name that occur during  first 90 days of general registration for each gTLD. This will obviously put you in a position to take whatever action you feel is appropriate.

In order to register your trade mark with the Trademark Clearinghouse you will need to submit proof of trade mark rights. Only one application will be required in order to cover all the new gTLDS,  so, for  example, if you're in financial services you won't need to register separately for .bank and .finance, or, indeed, all those other gTLDs that may suggest financial services.  We recommend that you register as soon as possible, because registration isn't automatic as validation of rights is part of the process.  The cost of registration will depend on the number of years for which you register.

ENS's role
At ENS we can obviously register the trade marks that you wish to register with the Trademark Clearinghouse on your behalf. In fact, we strongly suggest that you entrust registration to us because we are well placed to put together the documentation that's required – the registration certificate, possibly the renewal certificate, and the declaration of use and sample of use in the case of a Sunrise Period application.   We can also co-ordinate all the third party registration notifications that come in.

The extra mile
ENS can, however, do far more than simply act as a registration agent.  It's clear that it's going to be very difficult to keep track of all the launch dates and Sunrise Periods, so we also offer our clients free access to a service that allows users to devise a clear gTLD strategy:    one which tracks gTLD launches and Sunrise Periods; one which suggests which domain names should be registered and when; and one which submits trade marks to the Trademark Clearinghouse and processes Sunrise Period applications.   If you want to know more about what we can do for you, give us a call.

2.  NEW NIGERIAN .ng DOMAIN NAMES
 
On 7 April 2013, the Nigerian Internet Registration Association, NIRA, announced the launch of the .ng domain name extension, making it possible to register Second Level Domains (SLDs) in Nigeria. 

Therefore, instead of trademark.com.ng it is now also possible to register trademark.ng. It is envisaged that the .ng domain will become more popular that the .com.ng extension.

If you are the registrant of a .com.ng domain name, it would be advisable for you to urgently register the matching .ng domain name. Furthermore, if you have registered, or applied to register, trade marks in Nigeria, or if you are considering doing business in Nigeria, it is recommended that .ng registrations be obtained for the trade marks that are, or will be, used in that country.
 
NIRA has classified a number of domain names as premium value domain names, which will only be available via auction.  These are likely to include descriptive domain names such as insurance.ng, although the list of premium domain names has not yet been published. The auction procedure also still needs to be finalised.
 
If you are considering doing business in Nigeria, it is also vital that you register the trade marks that you will be using, in that country, as it is very common for third parties to register popular or valuable trade marks belonging to other parties, and it is both challenging and costly to enforce trade mark rights in Nigeria.
 
 
3.  INTELLECTUAL PROPERTY CLIENT PORTAL

Clients of ENS' IP department are able to view their IP portfolios online, via its Patricia® Client Portal (PCP), 24 hours a day, 7 days a week. The PCP provides clients with real-time access to their trade mark, patent, registered design and domain name portfolios and allows them to search and generate customised reports according to their particular requirements. The PCP is totally secure and clients are provided with a unique username and password that allows them to access their own IP portfolios only.
  

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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