1. Introduction

This note sets out to provide you with the key facts about the TMCH, the background to the TMCH, how Hogan Lovells can assist and, at this stage, what your next steps should be. Hogan Lovells has been approved as agent for the TMCH which will enable our clients to protect their trade marks under the upcoming new gTLD extensions since participation in the TMCH is mandatory for the sunrise and trade mark claims services in the ICANN new gTLD process.

  1. The TMCH Key Facts
  • The TMCH will provide authenticated trade mark information worldwide to new gTLD registries and to domain name registrars.
  • Participation in the TMCH is mandatory in order to protect your trade marks under the new gTLDs.
  • There is no urgency. While the TMCH will start accepting trade mark information from 26 March 2013, it is important to keep in mind that the first new gTLDs will not launch before June 2013 at the earliest. However, now is the time to consider strategy.
  • Hogan Lovells will be assisting clients in every aspect of the TMCH, from devising strategy with regards to which trade marks to submit to the verification and uploading of trade mark data to the TMCH. If you wish to make use of our services in this area, please send an email to 'tmch@hoganlovells.com' with your usual Hogan Lovells contact on copy and we will ensure that you are guided through this new process and provide you with further information as the TMCH develops.
  1. Background to the TMCH

The Internet Corporation for Assigned Names and Numbers (ICANN) opened the new gTLD application process in January 2012. The application window closed on 30 May 2012 and the details of the 1,930 received applications were made publicly available on 13 June 2012.

The new gTLD applications are currently being evaluated by ICANN to assess the applicant's technical, operational and financial capability to run a gTLD registry. At the conclusion of this process there will potentially be over 1,350 gTLD registries launched onto the global domain name system in the near future.

In the past, for each launch of a new TLD trade mark holders have been obliged to submit their trade mark data directly to the gTLD registry for validation in order to participate in the registries rights protection mechanisms and to pay the registry a fee for such trade mark validation.

Taking into account the potential introduction of over 1,350 gTLD registries and the burden that this would place on trade mark holders, the TMCH was created in order to assist trade mark holders in the protection of their intellectual property during the launch of the future new gTLD registries. The TMCH will be central repository of validated trade mark data. In order to protect their trade marks in the new gTLDs, trade mark holders will be required to submit their trade mark data to the TMCH for validation and storage.

The concept of the TMCH was suggested as part of the tapestry of solutions that was put forward by the Implementation Recommendation Team (IRT) who were formed at ICANN's request to address the overarching issues of suitable rights protection mechanisms in the new gTLDs. David Taylor of Hogan Lovells served on the IRT and assisted in the development of this and the other proposed rights protection mechanisms.

Each new gTLD registry will have to make use of the data held in the TMCH to support the mandatory pre-launch rights protections mechanisms. Thus trade mark holders will only have to submit their trade mark data once, in order to benefit from the pre-launch rights protection mechanisms that all new gTLD registries will have to implement. The rights protection mechanisms will consist of a Sunrise period and a Trade Mark Claims service:

  1. Sunrise period: Eligible trade mark holders are allowed to register domain names matching their trade marks before domain name registrations are opened up to all applicants during general availability.
  2. Trade Mark Claims service: Once a new gTLD registry has launched and applicants can apply for domain name registrations under general availability, the registry is required to provide a notification to domain name registrants if they have applied for a domain name that matches a trade mark. In order for the domain name registration to proceed the applicant has to confirm that they have received the Trade Mark Claims notification. If the applicant chooses to proceed with the registration then a notification is also sent to the holder of the trade mark informing them of the domain name registration. This service must be provided for at least the first 90 days of general availability.

There are still some uncertainties surrounding the rights protection mechanisms for the new gTLDs and there are current proposals to potentially expand the rights protection mechanisms to provide additional cover for trade mark holders. However, as matters currently stand the Sunrise period and the Trade Mark Claims service will operate as described above.

The validation of trade mark data into the TMCH will be conducted by Deloitte. The fees charged by Deloitte will be US$145 per year per trade mark.