The new generic top level domains (gTLDs) will launch this year. As part of the agreed trade mark protection measures, the Internet Corporation for Assigned Names and Numbers (ICANN) has announced that the Trademark Clearinghouse (TMCH) will be up and running and accepting notification of trade marks from 26 March 2013.

The TMCH has been established by ICANN as a database of verified trade marks in order to enhance the protection of trade mark owners' rights with the introduction of the new gTLDs, with all new gTLD registries and registrars being required to use it.

Protecting Your Brands

Trade mark owners will be able to submit their trade mark information to a centralised database, which will provide them with protection in two stages:

  • Sunrise Periods: Sunrise Periods allow trade mark owners to register their marks as domain names in advance of the general public for a new gTLD; and
  • Trademark Claims Service: After a Sunrise Period has lapsed, trade mark owners will then be notified if someone else seeks to register a domain name that matches their trade marks notified in the TMCH.

Eligibility

To be eligible for inclusion in the TMCH, a trade mark must be one of the following:

  1. Nationally or regionally registered;
  2. Validated by a Court of law;
  3. Protected by a Statute or Treaty; or
  4. Some "other mark" constituting intellectual property. ICANN has indicated that "other marks" may also be included provided that they can be represented within and verified by the TMCH.

Further to this, the trade mark must be a 'word mark'. The TMCH will not accept:

  • Any mark starting with a dot (.) or containing a dot.
  • Any IP rights which cannot be represented within the technical limitations of the Domain Name System, for example patents and designs.

In order for trade mark owners to receive Trademark Claims notifications, no proof of use has to be submitted. However, to participate in Sunrise periods, a trade mark owner will need to provide proof that the trade mark is in use in the form of a signed declaration and a sample of use.

Fees

Deloitte has released a Fee Structure Summary which outlines fees in respect of two models for lodging trade marks with the TMCH. Under the basic model available for Trademark Holders the costs involved are US$150 to register a mark for one year, US$435 for three years and US$725 for five years.

The advanced fee model allows both Trademark Holders and Trade Mark Agents to pay discounted fees under an alternative pricing model. Discounts are earned by receiving 'status points' from registering or renewing trade marks and discounts are achieved based on volume. Addisons, as an agent, will be able to earn 'status points' to offer discounted fees for notification of trade marks in the TMCH.

Action Now

With the launch date of the TMCH fast approaching, trade mark owners need to prepare now and consider which of their trade marks should be lodged with the TMCH in order to give the best chance of protection of these brands from infringement and cyber squatting when the new gTLDs are launched.

The assistance of Ashleigh Fehrenbach, Graduate, of Addisons in the preparation of this article is noted and greatly appreciated.

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.