The Trade Mark Clearing House opened for registrations on 26 March 2013. The IPT Alert team look at what this means for business and the services that it will provide.

The Trade Mark Clearing House (TMCH) was established by Internet Corporation for Assigned Names and Numbers (ICANN) to assist in protecting trade mark rights in the new generic top-level domain (gTLD) system. Essentially, TMCH is a single global database for trade mark data, open to any holder of eligible trade marks (whether individuals or companies).

The TMCH offers to mechanisms to assist with trade mark protection: a “Sunrise Service” and “Trade Mark Claims Service”.

ICANN’s new gTLD Scheme

In late June 2011, ICANN approved a plan to introduce one of the biggest changes to Internet naming protocols by allowing parties, through the application process, to redefine endings for Internet domain names beyond the core generic endings such as .com, .net and .org. These new domain endings are known as the new gTLDs. 1930 applications have been submitted by organisations, communities and individuals each seeking to secure their own suffixes.

This change is a major opportunity for businesses to take ownership of a part of the Internet for the benefit of their customers, suppliers, channel networks, users and public in general and there are already a number of projects underway with groups like .paris and .eco planning to make applications. Ultimately, while there are currently only around a dozen top-level domain names, there could soon be hundreds.

ICANN’s process for evaluating applications is underway. To date 25 of the 1930 applications have been assessed with all 25 passing initial evaluation, such applications include one Australian application.

The new gTLD system is likely to go live in mid-2013.

Sunrise Service

The Sunrise Service provided by TMCH supports a limited pre-registration period during which trade mark owners can register the domain name that matches their trade mark, before name are generally available to the public. A Sunrise Period of at least 30 days is mandatory for all new gTLDs. To participate in a Sunrise Period, a trade mark owner must have a validated trade mark entry in the TMCH.

Trade Mark Claims Service

Following the Sunrise Period, the Trade Mark Claims Service provided by TMCH, is also a limited service running for 60 days from the date of an initial registration. It is a notification service to warn both domain name registrants and trade mark owners of possible infringements.

This service operates as follows:

  • When attempting to register a domain name, a potential domain name registrant will receive a warning notice that the domain name matches a trade mark recorded in the Trade Mark Clearing House. The registrant will be asked to confirm that its use and registration of the domain name will not infringe the trade mark owner’s rights; and
  •  If, after receiving the warning message, the domain name registrant continues to register the domain name, the trade mark owner will receive notification of the domain name registration, so they can take any appropriate action.

What is proof of use?

Both the Sunrise Service and the Trade Mark Claims Service are only available if the trade mark entry is ‘validated’ – that is, by submitting proof of use of the trade mark. Although, trade mark owners can submit their trade mark data to the TMCH without seeking to have it ‘validated’, the trade mark owner would not be able to take advantage of the operation of either service.

For verification of proof of use, trade mark owners must submit:

  •  A sample, such as an advertisement, a branded product, or some other example showing the trade mark in use, and
  • A declaration stating that the trade mark is indeed being used as stated.

Proof of use is not required for general entry into the TMCH, but a trade mark owner cannot participate in the Sunrise Services if it is not validated with this. Proof of use can be submitted at the time data is initially recorded in the TMCH, or at a later time.

When is a trade mark eligible for registration with the TMCH?

A trade mark is eligible if it is:

  • a nationally or regionally registered word marks from any jurisdiction
  • a word mark that has been validated through a court of law or other judicial proceeding 
  • a word mark that is protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion

Other marks that constitute intellectual property may be recorded in the Clearinghouse by arrangement with a registry.

Fees

TMCH fees will range from US$95 to US$150 per year per trade mark, depending on the number of trade marks submitted and their registration period (marks can be registered for 1, 3 or 5 years at a time).