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TRADE MARK CLEARING HOUSE – What’s all the fuss?

2013-07-28

INTRODUCTIONOn 12 January 2012, ICANN looked to revolutionise the Generic Top Level Domains (“GTLD’s”) effectively allowing companies and individuals to create their own unique GTLD, albeit for a not insignificant amount of money! Since this date, approximately 1400 GTLD applications have been received by ICANN including .finance, .sport, .football, and .bank, to name just a few.Of the newly applied-for GTLDs, 800 are "single registrant" domains, meaning they will only be available for use by the successful Applicant. The remaining 600 are referred to as "open" domains, meaning that each successful Applicant will effectively act as a Registrar, offering the GTLDs to third parties.Whilst the reports are a little conflicting at the moment, it is anticipated that ICANN plans to release these newly created GTLDs on to the market at a rate of 20 per week, starting at the end of September 2013: this date keeps moving but we will keep you updated once we know more.

THE TRADE MARK CLEARINGHOUSE

The TMCH was launched on 26 March 2013 to allow trade mark owners to lodge their registered trade marks into a single depository with a view to effectively putting the applicants for new domains on notice of their rights.

Provided your trade mark is registered centrally in the TMCH, there are two main advantages:-

-          When each "open" GTLDs is released onto the market, there will be a 60-90 day sunrise period for trade mark owners to register their own domains using these GTLDs: this effectively gives trade mark owners an advantage over third parties with unregistered rights;

After this initial sunrise period, it is then open to third parties to apply to register their own domains using the new GTLD. If a domain is applied for that conflicts with a trade mark registered in the TMCH, then the domain applicant will be notified and asked if they still wish to proceed.

If the domain applicant does wish to proceed, the trade mark owner can then initiate the

rather impressively named Uniform Rapid Suspension system (‘URS’). This is a quick and

relatively inexpensive alternative to the traditional UDRP route; the action costs £200-

350 and a decision is issued in around a month. However, the remedy is merely one of

suspending the domain, rather than having it transferred as with UDRP actions.

THE TRADE MARK CLEARINGHOUSE

Therefore, registration of your trade mark in the TMCH has some advantages, but you are

probably still asking yourself whether it is worthwhile doing. After all, provided you have a

good watch service in place, why would you want to spend more money registering with

TMCH simply to receive additional warnings? You may also be thinking that you

don’t really want to register a new domain name with one of the new GTLDs, especially as

some are being reported to be sold for several thousand pounds. Also, if you have to file a UDRP

in order to get the domain transferred to you, what is the advantage of using the URS?

Well, our answer is yes, it is worthwhile registering your trade marks with TMCH but not only for the above mentioned reasons. In fact, we believe one of the most important benefits of the TMCH system is one which is rarely reported by commentators:

We mentioned earlier that new domain applicants will be notified if their domain conflicts with the owner of a brand protected in the TMCH. When the domain applicant receives this notification, they are also asked to sign a Waiver – the Waiver is basically a declaration signed by them confirming that they are infringing a registered trade mark in the TMCH.

We at Lane IP believe that this will be a significant advantage to brand owners: when it comes to filing UDRPs, one of the toughest hurdles to overcome is proving that the right holder is the legitimate owner of the brand. If we are able to refer to the Waiver signed by the domain applicant, already confirming an infringement exists, this should make life a lot easier when bringing UDRPs (albeit currently untested). Unfortunately, not all ISPs have agreed to the Waiver process, but the ISP that is managing 300 of the 600 open domains is offering this service. The others are expected to follow suit, however, we are still awaiting formal confirmation

RECOMMENDATIONS

So is it worthwhile tipping an application into the TMCH or is this simply a way for ICANN to make some money? In our opinion, the answer is both but we hope to mitigate the drawbacks of the system by ensuring our clients have all angles covered.

What we will do for you:-

  • We will provide you with a complete list of all newly filed GTLDs and liaise with you to see which of these are of interest;
  • We will keep you updated as to the day these GTLDs are released on to the market so you can take advantage of the sunrise period;
  • We will register your trade marks with the TMCH but we will also supplement this service with a more detailed watch. At present, under the TMCH system, brand owners will be notified only when identical domains are applied for, not similar domains that may be equally problematic. Our supplemental service will therefore also let you know when similar domains are applied for; and
  • We will notify you whenever a similar or identical domain is applied for and provide recommendations in relation to whether the URS or UDRP is the better route to take.

Whilst we have a little time on our hands, since the first GTLDs are not estimated to be released until

September 2013 (and this date keeps getting pushed back), we recommend that we start to think

about which of your trade marks should be registered in the TMCH now.

Latest news

Brexit – its impact on Trade Marks and Designs in the UK...

This week is a historic week in which Article 50 is triggered signaling the UK’s exit from the EU.

Before we go any further, let’s be clear about one thing: despite some of the comments coming from certain
firms in some other member states, nothing at all will happen for at least 2 years. Nevertheless, we recognize
that our clients want to know what the future holds after Brexit. This is what we know, and can guess, at the
moment.

Laos became a Member of the Madrid Protocol as of 7 March 2016.

The Ministry of Commerce & Industry are currently in discussions to make significant changes to the way in which Trade Mark filings are handled and current proposals indicate that official fees are likely to increase by 100%.  Details as to when this will take effect have not yet been finalised but notification confirming the same is expected soon.

Latest articles
EU Commission Draft Withdrawal Agreement sets out Proposal for Treatment of EU IP Rights in the UK post-Brexit

On 28 February 2018, the EU Commission published its first draft proposal[1] as to the terms of withdrawal of the UK from the European Union, outlining how existing EU trade marks and designs will be treated vis-a-vis the UK following Brexit.

Although this is a draft document that is yet to be ratified by the UK government or UK Intellectual Property Office, it clearly sets out the EU's preferred stance as to the treatment of IP rights. It will now be sent to the EU parliament Brexit Group before then being transmitted to the UK government and bodies.

UK Court Seeks Guidance from CJEU on Issues of Broad Lists of Goods/Services and Intent to Use on Filing and Impact on Validity of Trade Marks

The UK High Court recently referred some key questions to the CJEU in a trade mark infringement action brought by Sky Plc[1], the answers to which could have a significant impact on the future filing strategies of brand owners in the EU and UK.

Mr Justice Arnold, acknowledging the 'general public importance' of the issues raised in this case, referred the following questions to the European Court for guidance, firstly on the issue of the clarity of broad terms in goods/services contained in a trade mark registration.

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