As the process of evaluating top level domains continues, trade mark owners should take note of an important development. The Trade Mark Clearinghouse is now in operation.

What is the Trade Mark Clearinghouse?

Operated by Deloitte Enterprise Risk Services, the Trade Mark Clearinghouse (TMCH) is a central repository of trade mark rights. An entry in the TMCH does not create a right nor is inclusion in the TMCH proof of a right. However, without acceptance of a trade mark right in the TMCH, trade mark owners will not be able to rely on mechanisms that have been created to assist in protecting trade mark owners’ rights once the new top level domains are launched.

Why register trade marks in the TMCH?

Registering a trade mark in the TMCH will have two functions:

  1. Trade mark owners will be able to participate in sunrise periods. A sunrise period is a period reserved for trade mark owners to register their trade marks in the second level ahead of the general public. For example, Griffith Hack would be able to register the domain name griffithhack.attorney in a sunrise period only if the trade mark GRIFFITH HACK was included in the TMCH.
  2. The TMCH will notify brand owners if a third party registered a domain name matching the trade mark included in the TMCH. For example, Griffith Hack would be notified if a third party sought to register the domain name griffithhack.web. Griffith Hack would then be able to take action to challenge that registration.

How do I register trade marks in the TMCH?

Trade mark owners may themselves apply to register trade marks in the TMCH or do so via agents such as Griffith Hack. The advantage of using agents is that all notifications requiring action will be sent to the agent for co-ordination with trade mark owners.

What documents will the TMCH require?

Registering a trade mark in the TMCH will require all relevant data for a nationally registered trade mark, court validated trade mark or a mark protected by statute or treaty. Documentary evidence will be required for court validated marks and marks protected by statute or treaty. Trade mark owners can opt in to the sunrise services at the time of submission for inclusion of a trade mark in the TMCH. We recommend that trade mark owners opt in to this service, which will require submission of a signed declaration of use together with a single sample of proof of use.

How much does it cost?

TMCH has developed a fee structure depending on the length of registration, namely 1, 3 or 5 years. Overall costs depend on whether brand owners wish to opt in to sunrise services and on the number of trade marks to be submitted. Please contact us for an estimate of costs tailored to your circumstances.

When should I start thinking of submitting my trade marks to the TMCH?

We recommend that brand owners seek to register their core trade marks well ahead of the launch of the first top level (currently estimated to be towards the end of this year) in order to be able to participate in sunrise periods. It is important to note that registration is not instantaneous and requires validation by the TMCH.