Australia: ICANN's Trademark Clearinghouse (TMCH): Key considerations for brand owners

In a previous article, we reported that the Internet Corporation for Assigned Names and Numbers (ICANN) had established the Trademark Clearinghouse (TMCH) to assist brand owners to protect their trade marks in the new generic top-level domain names (gTLD) world.

gTLDs have traditionally referred to the last letters of a domain name, for example, '.com', '.org' and '.net'. Under the new gTLD registration scheme, many have applied to register a wide variety of new gTLDs ranging from generic terms (".auto", ".car", ".bank", ".property", ".energy", ".pizza", ".realestate") to well-known brands (".bmw", ".apple", ".amazon"), opening up yet another area where brand owners need to be vigilant in protecting their trade mark rights.

With the first 'sunrise period' for the new gTLDs anticipated in October 2013, focus has again turned to ICANN's TMCH. The TMCH will act as a repository for verified trade mark data. Deloitte will manage the task of validating the data and IBM will run the TMCH database.

As brand owners consider their brand protection strategies, we discuss three reasons why ICANN's TMCH should be on your radar.

1. Under the gTLD system trade marks alone will not be enough to protect brands

The value in securing trade mark registration and obtaining a monopoly to the use of a trade mark in relation to specific goods or services is beyond dispute. However, if a brand owner chooses to engage in the protection mechanisms established by ICANN (as opposed to seeking other legal remedies), a trade mark alone will only get a brand owner part of the way to protecting their brand. This is because ICANN requires brand owners to record and have their trade marks authenticated and validated in the TMCH in order to participate in the Sunrise and Claims systems.

2. Recording a trade mark in the TMCH purchases access to sunrise and a watch

Recording a trade mark in the TMCH is not proof of, and does not create legal rights, but by taking this step, brand owners will purchase access to:

All new gTLD sunrise periods

This means that for at least 30 days before domain names under new gTLDs are made available for purchase by the general public, trade mark owners will have the opportunity to purchase domain names identical to their trade mark.

If brand owners opt in for sunrise services, they will need to provide a submission for verification of proof of use of their trade mark incorporating a signed declaration of use and a single sample of proof of use.

The TMCH 'claims service'

This effectively equates to a 'watch' service and means that after domain names under new gTLDs are made available for purchase by the public, domain name applicants that seek registration of a domain name that matches a trade mark recorded in the TMCH, will receive a warning notice.

If the domain name applicant chooses to proceed with registration, the brand owner will receive notification so that they can take any action (such as the Uniform Domain-Name Dispute-Resolution Policy, Uniform Rapid Suspension System or available domestic legal remedies) they deem appropriate.

3. Not all trade marks are eligible to be recorded in the TMCH

The TMCH will accept and verify nationally or regionally registered trade marks, court-validated marks and marks protected by statute or treaty. This means that the relevant trade mark must have national effect and be registered at the time it is submitted for verification.

Plain word and composite trade marks are eligible to be recorded in the TMCH, but the relevant word must be clearly distinguishable in the composite trade mark.

Trade mark applications, trade marks registered by a city, state, province, or sub-national region, International trademark applications made via the Madrid system (unless the underlying basic trademark registration has national effect) and registered marks that were subject to successful invalidation, cancellation, opposition or rectification proceedings will not be accepted by the TMCH. Trade marks containing a dot will also not be accepted in the TMCH.

Takeaway

The advent of the new gTLDs provides an opportune moment for brand owners to review their trade mark portfolios and ensure that their most important brands are adequately protected.

While each brand owner has their own strategic imperatives, recording trade marks in the TMCH will provide a further way for brand owners to protect their most valuable trade marks and maintain control of their brands.

It is difficult to forecast the effectiveness of the TMCH. However, given that recording trade marks in the TMCH will be a pre-requisite for participation in the Sunrise or Claims systems in relation to all new gTLDs, if your company is concerned about protecting its valuable trade mark rights, now is the time to seek advice from your trade mark lawyers to determine whether engaging in the TMCH process is the right strategy for your company and whether any supplementary trade mark filings need to be made to take advantage of the TMCH protocols.

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.