By Vicky Stilwell
The Trademark Clearing House (TMCH) is a centralised repository service for the validation and protection of trade marks. The TMCH is operated by ICANN, which is in the process of launching some 1900 new generic top level domains (gTLD’s). The gTLD’s that have been launched to date include .world, .business, .network, .software, .auction, .property and .investments, to name a few. A bank, for example, may want to register its trade mark under the gTLD .bank. There may also be several additional relevant gTLD’s, such as .finance and .loan.
The TMCH provides a unique central process for the validation of trade marks for strategic defensive purposes. The main advantage is that it affords trade mark owners, who have validated their trade marks with the TMCH, the opportunity to register domain names, matching their trade marks, within the “sunrise period” following the launch of each new gTLD, before such domain names are made available for registration by the general public. In addition, if a trade mark owner has validated his trade mark with the TMCH he will be notified of the launch dates of all new gTLD’s as such launch dates are announced by ICANN.
The TMCH also notifies the owners of validated trade marks if any third party registers, or attempts to register, a domain name matching their validated trade mark. This is of great assistance to trade mark owners in preventing so-called “cybersquatting”.
A trade mark owner that wishes to enforce his rights and take action in respect of a domain name that has been registered by a third party may file a complaint in terms of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) and rules or its Uniform Rapid Suspension System (URS) rules, the latter of which is a lower cost, faster path to relief which can be used by trade mark owners in the most clear-cut cases of infringement.
A large number of new gTLD’s have already been launched, and there are many still to come. It is therefore important for brand holders to validate their trade marks with the TMCH as soon as possible to enable them to enforce their trade mark rights and to register domain names with extensions that are relevant to their businesses during the sunrise periods of the relevant gTLD’s. The TMCH validation process allows for the validation of trade marks for a 1, 3 or 5 year period.
In the event that you require any further information regarding validation of trade marks with the TMCH, the new gTLD’s that have, or are still to be, launched, or the domain name dispute resolution process, please contact Vicky Stilwell at firstname.lastname@example.org or Robin Richardson at email@example.com.
This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.