Protection of trademarks within the context of new domain name extensions: The Trademark Clearinghouse
In a few weeks, in addition to traditional domain name space zones such as .com or .fr, more than a thousand new extensions (“new GTLDs”) will come into existence on the web (for example .banque, .hotel, .music, or even .paris).
Any person that will meet the requirements set by the Registries in charge of these new extensions will be entitled to register the domain name of their choice, such as, still for example, “mytrademark.paris”.
In order to safeguard the rights of trademark owners against the registration by unauthorized third parties of their trademarks under these new extensions, a new global repository, the “Trademark Clearinghouse” (TMCH), has been created.
This organization will set up three procedures intended to:
- give holders of active (used) trademarks the opportunity to apply for the registration of their marks as domain names under the new extensions in advance of the general public,
- during the first opening months of each new extension, inform any third party that applies for the registration of a domain name identical to a prior mark, that their reservation might infringe said prior mark,
- during the first opening months of each new extension, alert prior trademarks holders when third parties register a domain name that matches these holders’ marks.
To enjoy these benefits, it is necessary to record your trademarks with the TMCH.
Trademarks available for recordal are your registered National, Community, or International trademarks.
In case you wish to register a domain name in a new extension in advance of the general public, your application to record in the TMCH will have to be accompanied by a proof of your mark’s use.
The recordal of a mark with the TMCH will need to be renewed each year, every three years, or every five years, depending on the duration initially chosen by the rights holder.
The TMCH will open its doors on March 26, 2013.
We remain at your disposal to take the necessary steps to record your trademarks with the TMCH and naturally, to answer any question you may have in this respect.