Author: Charlotte Duly
30 July, 2013
The first batch of gTLDs will be released in September 2013. This first release will focus on non-Latin characters, such as those containing Chinese or Arabic characters.
The Trade Mark Clearing House (TMCH) anticipates a 20 day turnaround for processing applications to record Trade Mark rights with them. Brand owners interested in using the TMCH should look to register by early to mid-August. However, all new gTLD Registries are obliged to provide a 30 day notice period prior to each sunrise period. If interested in using the TMCH for a specific new gTLD, you can wait to register when the sunrise period of interest is announced. However be warned, the time to record rights with the TMCH is unclear. During busy periods it could take longer than the estimated 20 days.
Brand owners with existing Trade Mark registrations for non-Latin characters, including transliterations, should give serious consideration to applying to the TMCH early, to ensure their rights are recorded before the first release of gTLDs.
Applications for closed gTLDs, which are those dictionary words which will not be available for public use, need further discussion. They are not expected to be released in the near future. There were a number of applications for closed applications filed by companies including Google and Amazon for strings such as .music, .blog and .book. However, where a term is both a Trade Mark and a generic word, such as .apple, the new gTLD may be allowed to proceed. This uncertainty about the closed gTLDs could lead to some of the applications for new gTLDs being withdrawn or to the applicant changing the business model from closed to open to allow third parties to register that domain extension.
If you would like further information as to how the process may impact on you or how gTLDs could form part of your brand protection strategy please contact Charlotte Duly or your usual Boult Wade Tennant advisor. Further details on this topic can be read in our Aprils bulletin: New gTLDs – What you need to know.