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7 April, 2013

On 26 March 2013 the Trade Mark Clearinghouse (TMCH) was launched by the Internet Corporation for Assigned Names and Numbers (ICANN). This new initiative allows Trade Mark owners to submit Registered Trade Mark data to TMCH. The data can then be used to support sunrise applications for new gTLDs (global Top Level Domain Names), and also in relation to Trade Mark claims to prevent registration of conflicting domain names.

The TMCH applies to the new gTLDs only. It will not cover existing domain name suffixes such as .com or .co.uk.

There is no deadline to record Trade Marks with TMCH but since the first batch of gTLDs is expected to be released for a 90 day sunrise period in June 2013, it is recommended that those rights holders who wish to participate should record by their Trade Marks by early May 2013.

Anyone attempting to register a domain name which matches a Trade Mark already recorded with TMCH will be notified of the Trade Mark rights which have been recorded at TMCH. If the domain name registrant decides to proceed with the application, despite the notification, then the Trade Mark rights holder will be notified of the new domain name registration and can potentially object if they are concerned.

Recording Trade Mark rights with TMCH also allows registration of a domain name during the sunrise period; that is, before the domain name becomes available to the public at large on the usual first-come-first-served basis.

In order to record Trade Mark details with TMCH, full details of the Trade Mark registration are required along with one sample of use and a Declaration of Use signed by the Trade Mark holder, and a payment to the TMCH which is calculated on an annual per-mark basis.

If you are interested by the new initiative and would like more information, then please do not hesitate to contact us: in particular, we would be glad to assist with preparing the sample of use and Declaration. If you would like further information on the new gTLDs and the TMCH please contact Charlotte Duly or your usual Boult Wade Tennant advisor.