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
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.
To be eligible for inclusion in the TMCH, a trade mark must be
one of the following:
Nationally or regionally registered;
Validated by a Court of law;
Protected by a Statute or Treaty; or
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
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.
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.
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
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.
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