This content is from: Trademarks

Device marks to be protected in new gTLD Clearinghouse

Device trade marks will be eligible for inclusion in the Trademark Clearinghouse (TMCH), which will help protect trade mark rights when the new gTLDs are rolled out later this year

The TMCH operator, Deloitte, is publishing the registration guidelines today. They will confirm that device marks as well as word marks and unregistered marks recognised by a court will be accepted.

However the device mark must include characters that are predominant, clearly separable or distinguishable from the device element and they must be in the same order in the mark and the TMCH application.

In the event of doubt, trade mark office records or Deloitte’s own analysis will be decisive.

The TMCH is a new instrument designed to provide some protection for trade marks and related rights when new gTLDs are launched. Icann announced this week that it will go live on March 26 this year.

Managing IP understands that any trade marks recorded from that date will be protected with effect from the date of the launch of the first new gTLD. That means there is no disadvantage in terms of term of protection or cost for filing early.

Recordal in the TMCH costs up to $150 per trade mark and means the mark benefits from two services, both of which are mandatory for new gTLD registries: Trademark Claims and Sunrise.

Under the Trademark Claims service, applicants for domain names in new gTLDs will receive a warning notice if they try to register a domain name that exactly matches a TMCH record. If they go ahead anyway, the trade mark owner will receive a notification.

The Sunrise service, which only applies to TMCH marks which have proof of use, enables trade mark owners to take advantage of sunrise periods offered by new gTLD registries to protect their marks. But it is up to registries to set the price of sunrise registrations.

Registries can also offer additional IP protections, and some have indicated they will do so. For example, they could offer sunrise periods that are longer than the stipulated 30 days or they could extend protection to similar as well as exact matches.

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