The Trade Mark Clearing House – Do You Need to Sign Up?

The new generic top level domains (gTLD)

In January 2012, ICAAN began allowing organisations to apply for new Generic Top Level Domains (gTLDs) which will operate alongside the 280 Country Code Top Level Domains (.com and .co.uk etc) and the 22 existing gTLDs (.biz and .info etc).

Around 1400 applications for gTLDs have been received by ICAAN – 800 of which are intended solely for use by that single applicant (for example, they are in the ".companyname" format) and 600 of which are intended to be open for industry or interest group use, meaning that they will effectively operate as domain name registries (for example .bank or .sport).

The initial application process for new gTLD registries has now closed and attention has shifted to focus on how trade mark owners can protect against third parties registering their brands as domain names under each independently run registry.

The Trade Mark Clearing House (TMCH)

It is against that background that the TMCH opened for business on 26 March 2013.  The TMCH operates a central database at which brand owners may register their trade marks in an attempt to pro-actively protect their brands in relation to the new gTLD registries. 

TMCH - Benefits

The basic fee for registration, with reductions for larger trade mark portfolios, is relatively inexpensive, at USD$150 per trade mark per year.  There are two main benefits of registration.

TMCH Registrants are given a 30 day "sunrise period" (prior to the live launch of any given gTLD) in which to register a domain name that matches their trade mark exactly.  For example, Samsung would have the exclusive right to register samsung.shop (but not samsang.shop).

For a period of at least 60 days after a new gTLD registry is launched:

• applicants for domain names on a new gTLD will be warned if they apply for a domain name which matches exactly a TMCH protected trade mark; and
• TMCH Registrants will be notified when such applications are made.  If the applicant proceeds despite the warning then there is a quick and relatively inexpensive alternative to UDRP proceedings (at a cost of £200-350) which allows Registrants to seek to suspend the applicant's domain name; unfortunately though, unlike UDRP proceedings, it cannot compel the applicant to transfer the applicant's domain name.

TMCH - Limitations

• The TMCH regime will not protect against “typosquatters” – brand owners will only receive notifications for exact matches to the trade marks they registered with the TMCH.
• The TMCH will not guard against domain names containing a trade mark as well as other words, for example, Samsungphones.shop, unless Samsungphones is a registered trade mark and has been registered with TMCH.
• Only trade mark registrations (and not pending applications) may be registered at the TMCH. 
• The Trade Mark Claims Period is for a limited time only – it is envisaged there may be a “spike” in infringing applications after the protection periods close.
• On top of the costs of registration, brand owners will still have to pursue applicants via whichever disputes regime applies to that gTLD.

TMCH – Is it worth registering your trade marks?

Brand owners will need to weigh up the benefits and limitations when considering whether it is worth registering at the TMCH.

As a general rule, brand owners should consider protecting their trade marks at the TMCH, just as they should consider putting in place other protection measures in respect of their trade marks, such as "watch notices". 

We recognise that the TMCH regime is not for everyone and it is likely that larger companies with a large portfolio of trade marks and who have the resources to pursue infringers, would be more likely to put such protection measures in place.  Certainly, the TMCH registration fees look like good value as against the cost of acquiring domains from third parties later down the line. 

Those companies that don't have the resources for the TMCH regime can take comfort from the way in which many internet users now browse the web.  Many users no longer type in URLs but instead use search engines (such as Google) to pinpoint the business they are searching for.  In turn, Google utilises a wide range of data (site popularity, advertising, key words etc.) rather than domain names alone to rank sites in their search results.  On this basis, resources for smaller companies may better be spent on Google optimisation and/or advertising to ensure that consumers arrive at your site before anyone else’s – that is, especially true, given the limited scope and shelf-life of the Trade Mark Claims period.