The release and registration process of approximately 1900 new generic Top Level Domains (gTLDs) is scheduled to start this year.

This will include, among others, .wine, .doctor, .adult, .attorney, .trust, .you, .joburg, .africa, .rent.

Whilst the introduction of new gTLDs will enhance competition, it will also entice cyber squatters. This is a cause for concern as the extent of the potential damage caused by cyber squatters remains unknown.

Trade mark owners are therefore advised to identify trade marks and apply for Trade Mark Clearing House (TMCH) registration with vigilance.

What is TMCH?

The TMCH, which came into effect on 26 March 2013, allows trade mark owners to register their trade marks directly with the TMCH.

While registration with the TMCH does not automatically block unauthorised third parties from registering gTLDs, there are two distinct advantages to having a TMCH registration:

1. Sunrise period: Trade mark owners will be given preference to apply to register a trade mark as a gTLD prior to that registry being open to the public.  The Sunrise period for all new gTLD registries will be at least 30 days. To be part of the Sunrise period, trademark owners however need to validate and verify their trade marks with the TMCH who will in turn verify a trade mark and allocate a verification code to be used during the Sunrise period.
2. Alert: Should an unauthorised third party apply to register a trade mark as a gTLD, the trade mark owner will be notified within the first 90 days of general registration, thereby allowing the trade mark owner to take the relevant recourse.

What is required for TMCH registration?

Proof of a registered trade mark that is in force, for any territory, is necessary for TMCH registration.  You will only be required to lodge one application to cover all new gTLDs within a specific sector. As an example, should you render healthcare services, the registration should extend to gTLDs associated with the healthcare sector.

TMCH registrations are valid for either one, three or five years and fees are applicable.

Retain and enforce your rights as trade mark owner

The introduction of new gTLDs highlights the importance of filing, registering and maintaining trade marks. It is therefore highly recommended that trade mark owners continue to take the necessary steps to retain and enforce their rights.

Donvay Wegierski, director, Werksmans Attorneys