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IP Cases & Commentary – Details

02 May 2013

Trademark Clearinghouse Protection for Trade Mark Holders

Verity Ellis & Scott Gardiner

On 26 March 2013, the Internet Corporation for Assigned Names and Numbers (ICANN) launched the Trademark Clearinghouse (TMCH). It is envisaged that the Trademark Clearinghouse will provide a database for individuals and businesses to register their brands, ahead of the release of around 2,000 generic top-level domains (‘gTLDs’), eg, ‘.news’, later this year.

The TMCH will primarily serve two functions:

  1. The ‘Sunrise’ registration service, which allows members of the Trademark Clearinghouse to register a domain name that corresponds to their registered mark at least 30 days before such top-level domains (TLDs) become available to the public.
  2. Trademark Clearinghouse participants acquire access to a ‘Trademark Claims’ service, which notifies the trade mark holder if a third party applies for a domain that matches their mark.

Fees for joining the TMCH range from $95 to $150 per year per trade mark, although there will be discounts depending on the number of trade marks recorded and the duration of such registrations.

Whilst the benefits of registering with the TMCH have been extolled by many (unsurprisingly not least by ICANN themselves), the programme is not to be viewed as a panacea to the challenges which brand owners face online.

As the TMCH programme primarily serves as a central database for what ICANN has termed ‘verified rights information’ (the operators of the TMCH checking and confirming the validity of all trade mark data submitted to it) and, secondarily, serving as a mechanism for notifying brand owners of potentially infringing registrations (via its ‘Trademark Claims’ service), brand owners must continue to adopt their own practices and procedures for facilitating any enforcement action which may be deemed necessary. It is a shame that ICANN has not provided for a registration ‘blocking service’, particularly in relation to those domain name applications which actually infringe the rights of brand owners who have registered trade mark data with the TMCH (although admittedly such a system would also be open to criticism as it would prevent third parties who also have rights in a particular name from registering that name with one of the new gTLDs).

Further, when considering the value of the programme, rightsholders may be right to be critical of the cost of registering their marks (which may be many) with the TMCH and, in view of the absence of a registration ‘blocking service’, the subsequent cost of any required enforcement action. However, we must stress that enforcement action need not be expensive and, when incidents of infringement are dealt with swiftly and proportionately, can prove invaluable in protecting a brand online as well as from the consequences which may follow ‘offline’. As always, we would encourage brand owners to speak to one of our many experienced attorneys or solicitors should they become aware of any infringing activity of concern online.

Other anxieties felt by rightsholders include the TMCH’s ‘identical match’ criteria. This requires that during any Sunrise period operated by one of the new gTLDs, rightsholders may only submit an application for a Sunrise registration which is an ‘identical match’ to a mark of theirs which is registered with the TMCH. Similarly, in relation to the ‘Trademark Claims’ service, rightsholders will only be notified of a potentially infringing domain name registration where that registration is an identical match to one of their TMCH marks. Clearly, there are shortfalls to the current programme but we consider that with the right advice (and in conjunction with other pre-emptive steps and practices), the TMCH can add real value to brand owners and their ability to protect their brands upon the expansion of the domain name system.

The first of the new gTLDs could go live as early as July 2013 and it is foreseen that many rightsholders will register with the TMCH prior to such a date, in order to ensure that they are able to secure their own domain name registrations in desirable new gTLDs as well as prevent the considerably less desirable registration of infringing domain names.

Useful links

TMCH FAQ provided by ICANN

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