ADDITIONAL INFORMATION ON THE TRADEMARK CLEARINGHOUSE
The launch of the Trademark Clearinghouse was postponed to the month of March. By then, you must prepare to protect your rights in the ever-changing Internet landscape. Below is a Q&A list provided to help you get a better understanding of the situation.
What is the Trademark Clearinghouse (TMCH)?
Under ICANN’s programme to launch new gTLDs, one of the tools to protect rights that ICANN has planned is the creation of the Trademark Clearinghouse (TMCH).
The goal of this entity, which is independent from ICANN, is to be a sort of gigantic central database wherein the trade marks of those who want to join will be entered and verified.
What is the role of the Trademark Clearinghouse?
The role of the TMCH is twofold:
- Verify and validate trade mark rights; this mission has been assigned to Deloitte, an auditing and consulting firm
- Manage the database and distribute information to new registries: this mission has been assigned to IBM, an IT service provider.
What is the purpose of registering a trade mark in the TMCH?
In the contract that binds new registries and ICANN, the new registries are subject to the mandatory obligation to plan for a Sunrise period before they offer top-level domains, followed by a Trademark Claims period. This obligation is in answer, in particular, to the requests of various stakeholders in the intellectual property community.
Therefore, to register a trade mark in the TMCH is the only way to be advised of Trademark Claims.
What is a Sunrise period?
A Sunrise period is a period prior to the general offering of a new top-level domain, giving trade mark proprietors priority to register one or more domain names. Sunrise periods are mandatory for any new top-level domain.
What is a Trademark Claims period?
A Trademark Claims period is a period organised by a registry in the early stages of its offering of a top-level domain, during which trade mark proprietors can receive NORNs (“Notifications Of Registered Name”). More specifically, if, during a Trademark Claims period, a third party registers a domain name that corresponds to a trade mark entered into the TMCH, this third party will be advised of the existence of an IP right on the given term and the trade mark proprietor or his agent will also be advised of this registration. The registration of the domain name will not be blocked, but notifications to the domain name applicant and trade mark proprietor will be sent.
What trade mark(s) should I register in the TMCH?
The trade marks that the TMCH will accept are:
- Registered national, Community and international trade marks,
- Trade marks validated by a court or court proceeding,
- Trade marks protected by a statute or treaty (as long as said statute or treaty has been in effect since June 2008 at the latest).
As a priority, you must target principal trade marks and even your secondary trade marks. This obviously depends on your budget and your monitoring strategy, as well as the registration of domain names (territory/classes of goods and services covered by your trade marks, geographic zone where you have facilities, distribution, etc.).
Trade marks starting by a period or including a (.) will not be allowed.
If the trade mark includes one or more elements the DNS system does not handle (e.g. a space, "!", "+", etc.), then these characters may be omitted or replaced by a hyphen.
Special characters such as "&" may be omitted, replaced by a hyphen or translated into the trade mark's language.
To participate in Sunrise periods, I must prove the use of my trade mark. What type of proof is accepted?
Owners of trade marks that are included in the TMCH must provide proof of the use thereof to be able to claim a priority right in a Sunrise period. Proof of use is made by way of a declaration (standard form provided by the TMCH), signed by the proprietor of the right, and the provision of a sample.
Deloitte indicates, for example, labels, advertisements, all types of marketing materials, brochures, catalogues, screen shots, etc., presented in the form of links, copies and photos.
N.B. The following is not accepted: domain names that include the trade mark, emails, licenses and business cards.
If I register my trade mark in the TMCH, is there any guarantee that I will obtain the corresponding domain name I'm interested in?
No. When you register your trade mark in the TMCH, you have the right to participate in the priority Sunrise periods (subject to proving use) and benefit from the notifications provided at the time of the Trademark Claims but each registry has its own eligibility criteria, which you must also fulfil.
How long is the registration of a trade mark in the TMCH valid?
You can register trade marks in the TMCH for one, three or five year periods.
Must I renew the registration of my trade mark in the TMCH?
Yes, after the initial registration period in the TMCH.
What happens if my trade mark is no longer valid (non-renewal, revocation, etc.)?
The TMCH checks the validity of each trade mark every year. If the trade mark no longer exists, it will be removed from the TMCH. You will then no longer be able to use this trade mark in the TMCH as grounds to claim a priority right in a Sunrise period or benefit from Trademark Claim notifications.
The proof of use must be re-filed every five years.
When will it become available?
The start date for validation is planned for the month of March 2013, but the precise date is not known.
The TMCH's database should be launched in April.
What is a TMCH agent?
We strongly recommend you use an agent, who will be registered as such with the TMCH and will centralise the management and saving of the files.
LAVOIX can assist you in selecting relevant trade marks and also in compiling the dossier and selecting your proof of use.
Publication date : March 2013