How Hong Kong firms can protect their brand in the digital era

Just when you thought your Hong Kong website had every possible permutation covered from dot com to dot asia and beyond, the Internet Corporation for Assigned Names and Numbers (which mouthful we’ll refer to as ICANN from now on) has decided that April 2013 is as good a time as any to open the flood gates just a little wider, with the variety of available domain names zooming from twenty or so now to potentially fourteen hundred sometime this year.

Most industry participants in Hong Kong tend to see the logic for the increase in choice of available domain name real estate. British readers will no doubt remember the adding of the “1” and “020” to telephone numbers in the UK, which was a headache at the time but paved the way for the 60 million or so cell phone numbers that were yet to be released. ICANN has received applications covering many generic names including “.shop” and “.buy” and more notoriously “.book” by Amazon. The Trade mark owners and their legal advisers couldn’t however help but notice the elephant in the room with a path paved for (at best) cyber squatting, and (at worst) the likelihood of cunningly named pretenders such as www.louisviutton.luxury.

Thankfully ICANN has taken note, or at least the lobbying on this front has been very successful. Built in to the new domain name issuing program, is the Trademark Clearinghouse (TMCH). This service, which launched on 26th March, allows brand owners to submit their trademark data into one centralised database while the new names are introduced into the domain name system. The TMCH accepts registered word marks from any jurisdiction for registration.

TMCH users are offered a two pronged service. The Sunrise Service gives trademark owners 30 days before a domain name is offered to the public to safeguard the name that matches their trademark. The Trademark Claims Service warns both domain name registrants as well as trademark holders of possible infringements when a new domain is being registered. This allows the owner to take any appropriate action if the infringer goes ahead and registers regardless.

Of course, the service isn’t free and the one-year, three-year and five-year plans for registering trademarks on their database run at US$150 for one year, US$435 for three-years, and US$725 for the five-year plan, with discounts for higher volumes of trademark registrations. In view of the relatively inexpensive costs however and the potential time and costs savings offered by the TMCH it may well pay to take advantage now and protect your trademarks while you can.