Deloitte publishes Trademark Clearinghouse fees

23-01-2013

Deloitte has revealed that IP owners will pay $150 to file their trademarks into the centralised trademark database – but they can pay discounted fees under an alternative pricing model.

The financial services company, which is operating the Clearinghouse under the new generic top-level domain (gTLD) programme, said only trademark owners can use the basic model. This will cost $150 to register a mark for one year, $435 for three years and $725 for five years.

Under the advanced model, both IP owners and trademark agents – those representing multiple IP owners – receive discounts as they earn ‘status points’ from registering or renewing trademarks. Each one-year registration provides one point, three-year registrations four points and five-year registration seven points.

All new gTLD registries will connect to the Clearinghouse, which IP owners can file their marks into during sunrise periods. During a further trademark claims period, lasting at least 60 days, the Clearinghouse will notify anyone attempting to register a domain incorporating a registered mark.

While Deloitte’s basic pricing model is straightforward, the advanced alternative is much more complex. To pay a discounted $145 one-year registration fee, users would need to earn up to 3,000 status points. Acquiring more than 100,000 status points would mean paying only $95 for a one-year registration.

Deloitte gave the example that users registering their first 3,000 trademarks for a single year would pay $145 per registration. The next 22,000 registrations would cost $135, and the next 35,000, $120. For 60,000 registrations they would pay $435,000 plus $2,970,000 plus $4,200,000, or an average price of $126.75.

The Internet Corporation for Assigned Names and Numbers, which is managing the gTLD programme, had said in December last year that filing fees would be capped at $150, but the exact fees were unclear until now.

“It’s good that the prices have been published,” said David Taylor, partner at Hogan Lovells LLP in Paris. “Though the fees were capped, there was some uncertainty about how much the Clearinghouse would cost rights owners.”

He added: “There’s not a large saving if you register marks for three or five years, rather than one, under the basic model. And under the advanced model, you need a lot of status points to earn a reduction. There’s not much incentive to file lots of marks.”

Kristina Rosette, of counsel at Covington & Burling LLP in Washington, DC, said many trademark owners will be unhappy about the prices and the complexity of the advanced model.

“It won’t be fast or easy to determine the most effective way going forward. If you have a significant portfolio of marks, it won’t be easy to register them all. It will be a real challenge analysing the problematic TLDs and deciding which marks to file. If the Clearinghouse is so expensive that it’s not used on its intended scale, it will be a lost opportunity to clean up the TLD space,” she said.

Jan Corstens, partner at Deloitte who has been working to implement the Clearinghouse, said the pricing models were fair:

“One price covers global protection and all languages. There are probably regions where it’s cheaper to validate a mark but also regions where it is more expensive.”

He added that brands will have the opportunity to benefit from reduced fees, particularly if they use the advanced model.

Corstens confirmed that the fees were final, and the Clearinghouse will be ready by the end of the first quarter of this year.

Though Deloitte’s fees cover sunrise and claims periods, each individual registry is likely to charge more for handling the trademarks during sunrise periods. “The sunrise costs will be the acid test of the Clearinghouse’s success,” said Taylor. “These fees are potentially another burden for rights owners.”

The fees are available here.

This article was first published on 23 January 2013 in World IP Review

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