RESOURCES

 

TRADE MARK CLEARINGHOUSE FOR TOP LEVEL DOMAINS

TRADE MARK CLEARINGHOUSE FOR TOP LEVEL DOMAINS

Top Level Domains, or ‘TLDs’, are internet domain names that are equivalents to .com or .net.  ICANN, the international domain name body, received around 1,930 applications for new TLDs since inviting applications some time ago.  Some applications for new TLDs are specific to certain companies (e.g. .google and .microsoft) and so are likely to be ‘closed’.  However, other applications are for more generic domain suffixes (e.g. .shop, .bank and .cloud) and so will probably be ‘open’ to the world to register, so raising concerns about the possible abuse of trade mark rights.

The Trademark Clearinghouse (‘TMCH’)

The TMCH is a global repository for trade mark data.  As such it will have an important role in the protection of trade mark rights during the influx of new TLDs.  The TMCH will: (i) verify trademark data from multiple global regions; and (ii) maintain a database with the verified trademark records.  The TMCH went ‘live’ on 26 March 2013.

Benefits of Registration with TMCH

Owners of marks registered with the Trademark Clearinghouse will benefit from the following services:

a)    Owners will be eligible to register domains in the ‘sunrise period’ before domains for each new TLD go on general release (for those TLDs that will be publicly available).  New TLD registries are required to offer a sunrise period of at least 30 days;

b)    When another party is applying to register a domain name that is an identical match to a mark registered with the TMCH, the applicant will receive a notification with the registered mark’s details, so effectively putting the applicant on notice about a potential conflict;

c)    If the applicant proceeds with the registration despite the warning notification, trade mark owners will receive a notification themselves, alerting them to another party’s registration, so enabling them to consider domain name dispute resolution service (DRS) procedures.  However, notifications will only be sent for 60 days following the end of the sunrise period for each new TLD.  If a trade mark owner registers its mark(s) with the TMCH via an Agent (see below), then notifications will be sent to the Agent.

It is important to note that registration of a mark with the TMCH does not constitute proof of any trade mark right, nor does it create any legal rights.

What Trade Marks Can Be Registered?

Three types of marks can be registered:

i)  Registered trade marks (including International ‘Madrid’ registrations and CTM registrations, but not including pending trade mark applications or expired/cancelled registrations);

ii)  Marks validated by a court (e.g. passing off rights in the UK, but only if confirmed by a court and not a trade mark office).  A copy of the relevant court decision will need to be submitted at the TMCH; and

iii)  Marks protected by statute or treaty (e.g. protected designations of origin, such as ‘Cornish Pasties’ or ‘Parma Ham’).  Evidence of the protected status will need to be submitted at the TMCH.

It appears as though only one trade mark registration per mark needs to be registered with the TMCH.  There seems to be no need to register each of, for example, a UK, a US, a German and a Korean registration for a single mark, due to the global nature of TLDs.  Similarly, if there are multiple registrations for a mark in the same territory (with each registration covering different classes for instance), then still only a single registration needs to be registered with the TMCH.  Of course, there’s nothing to stop multiple trade mark registrations being registered, but this would seem to be unnecessary.

Exceptions

There are some exceptions to the types of trade marks that can be registered with the TMCH:

a)  A registered trade mark that includes a TLD suffix (e.g. .org) cannot be accepted by the TMCH.  For example, a trade mark registration for MEWBURN.COM would not be acceptable;

b)  Any registered trade mark starting with or containing a “dot” cannot be accepted.  For example, a trade mark registration for .MEWBURNELLIS would not be acceptable.

c)  Pure logo marks (i.e. those marks without any letters, words or numerals) cannot be registered with the TMCH.  For marks that are a combination of words, letters or numerals plus graphic images, it is only the former components that will constitute the mark in the TMCH.

d)  Certain characters cannot be accepted by the TMCH, such as ‘spaces’, “@” and “&”.  Where such characters appear in a registered trade mark, the owner will have the option to either; 1) omit them; or 2) replace them with hyphens; or 3) ‘spell’ the characters as words if appropriate.  For example, a UK registration for MEWBURN & ELLIS would enable the owner to select any or all of the following options:

  • mewburnellis
  • mewburn-ellis
  • mewburnandellis (as “&” is ‘spelt’ as “and” in English)

However, if an EU registration for MEWBURN & ELLIS was being relied upon instead of a UK registration, then the owner would be able to ‘spell’ “&” in any EU language.  For this reason it would seem advantageous to rely on either a CTM or Madrid International registration, because of the multiple languages covered by these rights.

The various domain name options associated with a TMCH registration are automatically generated according to a defined set of matching rules.  The options essentially represent identical matches to the word/character elements of the underlying trade mark (subject to any of the anomalies described above).  Thus, a trade mark registration for MEWBURN ELLIS will only permit mewburnellis and mewburn-ellis as domain names and not, for instance, ellismewburn or mewburn (the order of component elements cannot be altered, nor can they be ignored or deleted).

Up to ten domain name options corresponding to one trade mark record are included in the initial cost of a TMCH registration.  If there are more than ten domain name options corresponding to the record, trade mark owners can pay an extra fee to have these additional names associated with the record.

Information Required for Registration

When a trade mark owner applies for TMCH registration of its registered trade mark(s), the following mandatory information must be provided:

  • Name of the mark
  • Registration number
  • Registration date
  • Jurisdiction
  • Classes protected
  • List of goods and/or services protected
  • Name of owner
  • Address of the owner
  • Additional contact details of the owner

The TMCH can request additional information and documentary evidence to be submitted in certain circumstances.

Furthermore, if the trade mark owner wishes to qualify for sunrise period eligibility, then proof of use evidence also needs to be submitted.  This evidence will be in the form of: 1) a declaration stating that the trademark is indeed being used; and 2) a sample of use, such as an advertisement, a branded product, or some other example showing the mark in use.  However, the standard of the sample appears to be quite a low threshold, as a simple website screenshot may suffice.

TMCH Registration Costs and Payment Options

There are two payment options for trade mark owners who wish to register their marks with the TMCH themselves.  The first is to simply pay by credit card; the second is to set up a deposit account with the TMCH, though this is only likely to be of interest to those who own a vast number of trade marks due to a significant initial deposit of USD15,000 being required.

The official fees for a TMCH registration are USD150 for one year duration, USD435 for three years or USD725 for five years, if a trade mark holder pays by credit card.  There are slight savings if a trade mark holder pays via its deposit account, although such savings are unlikely to be a sufficient inducement for most to create a deposit account.  There are no additional official fees for opting in to the sunrise period alerts or the domain name notifications.  The extra official fees for adding additional domain name options beyond the first ten are minimal – USD1 per year, per additional domain name.

Alternatively, trade mark owners could instruct a TMCH Agent to register its mark(s) on its behalf, no doubt for an additional fee.  A further or higher fee is anticipated if trade mark holders wish to opt in to the sunrise notification services, due to the extra work involved with the submission of evidence of use of the mark concerned.  Whilst Mewburn Ellis LLP is not a TMCH Agent, we would be happy to put you in touch with one such organisation.

Additional Comments

Trade mark owners should note that only identical matches to TMCH registrations will result in notifications being issued.  The TMCH will not send alerts to trade mark owners when another party registers a domain that is only similar to the registered mark, for instance when the other party has intentionally misspelt a trade mark.  As an example, even though there may be a TMCH record for MEWBURN ELLIS, notifications would not be issued upon registration of MEWBURN ELIS or MEWBURM ELLIS.  Such so-called ‘typosquatting’ is already an issue for domain name and trade mark owners, so it is disappointing that the TMCH does not address this problem.

Further Information

Please visit www.trademark-clearinghouse.com for more information on the TMCH.  This website has a range of downloadable information sheets and guidelines, plus a helpful ‘FAQ’ section.  For the details of TMCH Agent, please contact your usual trade mark contact at Mewburn Ellis LLP.  Finally, for more general information on TLDs, please refer to http://newgtlds.icann.org.

This information is simplified and must not be taken as a definitive statement of the law or practice.

RELATED SERVICES