In June 2011 the Internet Corporation for Assigned Names and Numbers (ICANN) voted to open the floor to a host of new domain suffixes (as reported by us here). Ahead of the launch of potentially hundreds of new generic top-level domain names (gTLDs), ICANN has set up a Trademark Clearinghouse (TMCH) to assist trade mark owners in protecting their rights. The TMCH is intended to be a global database for information on trade marks, and is scheduled to begin accepting registrations on Tuesday, 26 March 2013. Brand owners would be advised to consider the benefits offered by the TMCH and whether they wish to register their key brand assets with the TMCH.

Why register in the TMCH?

ICANN is billing the TMCH as a ‘one-stop-solution for protecting your brand in the new gTLD era.’ Whether this whole claim is true remains to be seen, but in essence, once a trade mark is registered in the TMCH, it is protected in two ways:

  1. ‘Sunrise Service’. Each time a new gTLD is launched, the trade mark owner is given a priority (‘sunrise’) period of at least 30 days to request its trade mark is registered as a domain name under that gTLD. Once the priority period passes, the domain name will be offered to the general public if it has not been requested by the trade mark owner.
  2. ‘Trademark Claims Service’. This is a two-fold notification service that follows the Sunrise Service: (a) notice is sent to a potential registrant when they attempt to register a domain name that matches a trade mark that has been registered in the TMCH; and (b) if, after receiving the notice, the registrant continues to register the domain name, the trade mark owner with the corresponding mark will receive notification of the domain name registration. It is then up to the trade mark owner to take action if desired.

Under the Identical Match Rule, the trade mark owner will only receive notice of direct textual matches: third parties will not be prevented from registering domain names of which only a part corresponds to a registered trade mark. For example, if a new gTLD – .veg – is launched, and the trade mark owner’s trade mark is ‘pak choi’, the domain name applicable must either be ‘pakchoi’ or ‘pak-choi’ for it to be deemed an Identical Match. ‘Packchoi’ would not be considered a match.

How to register in the TMCH

The TMCH requires sufficient information to confirm the validity of submitted trade marks. The specific requirements depend on the category of trade mark submitted. The TMCH currently accepts three types: (a) nationally or regionally registered trade marks; (b) court-validated marks; and (c) marks protected by statute or treaty. Patents, designs, know-how and trade secrets do not fall within its scope. The TMCH Guidelines, found here (note this is subject to change), set out in full detail the eligibility requirements for trade mark owners.

As regards cost, Deloitte – who are managing the TMCH with IBM – have published a fee structure of US$150 per mark for a 1 year listing, US$435 for a 3 year listing and US$725 for a 5 year listing. Submission is through the TMCH website, accessed here, and may be made by the trade mark owner or by an agent.

Uptake from trade mark owners

With over 20 gTLDs already in place, it remains to be seen how much appetite there will be for taking up the opportunity offered by the TMCH. Companies may decide the cost on internal resources (in terms of initial outlay, related advice and maintenance) outweighs any corresponding increase in asset value (in terms of brand control and protection, and the consumer trust this brings). However, as the number of gTLDs rises, brand owners may increasingly find the TMCH offers a cost-effective route to protecting their online presence and brand in the new gTLD world. In any event, brand owners would be advised to consider this issue at an early stage and to review their trade mark portfolios to ensure protection is sought for their most valuable brand assets.