As of today, 26 March 2013, the Trade Mark Clearing House (TMCH) has opened its doors to Trade Mark owners, enabling them to record their registered trademark rights prior to the launch of new Generic Top Level Domain (gTLDs).
As a trademark owner, recording your rights with the TMCH will give you the chance to proactively register domain names in their early stage of creation, prior to them being made available to the general public. In addition, the TMCH enhances trademark protection during the expansion of the domain names available on the internet. A selection of the new gTLDs include, but are not limited to, .shop, .food, .shoe, .app, .cloud as well as existing trademarks such as .apple and .windows.
Whilst there are a limited number of generic top-level internet domains (gTLDs) currently in use (such as .com or .org), later this year we expect to see an explosion of more than 1000 domains available for purchase. The reasons given by ICANN (The Internet Corporation for Assigned Names and Numbers), is that opening these domains will increase online competition and domain name space. The expansion of the gTLDs available will give rise to an increased potential for infringers to free-ride on the reputation of trademark owners.
By registering with the TMCH, trademark owners will be notified of any parties attempting to register potentially infringing domain names.
Whilst the new domain may potentially infringe a registered trademark, neither ICANN or the TMCH will automatically take the site down. Instead, the applicant is put on notice that their use could amount to trademark infringement.
Any brand owners reading this, should start thinking about defensively registering their trademarks with the TMCH, in respect of the industry specific gTLDs. For example a restaurant owner or food manufacturer may wish to record their trademark with the TMCH in respect of the new domain “.food”. In this way the owner will benefit from the priority period if they wish to register the particular domain when it goes live.
In light of the above, we are encouraging brand owners to take a proactive approach to protecting their existing trademark registrations, in order to be prepared and fully benefit from the introduction of gTLDs. Utilising the TMCH procedure will allow the owner to ring-fence their brand online, in respect of domains of commercial interest.
For any parties interested in the trademark clearing house, you will be required to submit details of your national or international trademark registration(s) as well as proof of use, to show a commercial interest in using the domain name when it goes live. More information about the TMCH procedure can be found at: https://trademark-clearinghouse.com/.
Contact the team at Albright IP…
We can provide further information on the Trademark Clearinghouse and instruct you on the best ways to register and protect your rights in this technologically advanced industry.
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