TRADEMARK CLEARINGHOUSE
“YOU ONLY GET TWO SHOTS TO GET THE REQUEST RIGHT, SO IT IS IMPORTANT TO KNOW WHAT YOU’RE DOING, AND WHAT WILL BE ACCEPTED AND WHAT WILL NOT.”
the trademark offi ces for which we see the most requests (currently the Offi ce for Harmonization in the Internet Market and the Benelux Offi ce for Intellectual Property), we can automatically fi ll out almost all the information, leaving no room for errors.
“On top of that, we still verify every request manually before sending it on,” De Kinder says.
Proving it
Before participating in a sunrise period, rights owners must provide a ‘proof of use’ to the TMCH. Without this, they can use only the claims service and extended claims service. Not everything is accepted as a proof of use.
TMCH specialist Bart Mortelmans from
bNamed.net explains that for many clients this can be confusing.
“Reasonably quickly aſt er we started providing TMCH services, we gathered the proof of use ourselves. In most cases we can simply fi nd such proof online. T at way we don’t have to bother the client with this and we know that the evidence we select will be accepted.
Most trademark owners and even trademark offi ces prefer to use a registered TMCH agent to perform their request to register a mark. As Lieve De Kinder from Belgian TMCH agent bNamed. net explains: “You only get two shots to get the request right, so it is important to know what you’re doing, and what will be accepted and what will not.
“With our experience, we are able to get more than 95 percent of marks to pass fi rst time. All the requests we have done so far have been accepted. To be able to reach such a high success rate, we have automated large parts of the request process. T e most important data of European trademarks are gathered automatically, and for
www.trademarksandbrandsonline.com
“For example, the TMCH won’t accept a copy of a business card or a copy of an invoice containing the trademark. It won’t accept a link to a website as proof of use, but will accept a screenshot of that same website,” he says.
Once a TMCH registration is in place, a so-called signed mark data (SMD) fi le, similar to a password to the TMCH, can be downloaded. With that fi le, a domain name can be registered during sunrise periods.
“As a registrar off ering services under every single domain name extension, including all the new ones, we have fully integrated the TMCH system with the domain name registration system,” Mortelmans says.
“If needed, a client will be able to access his SMD- fi le, but when viewing a TMCH registration he will also see an overview of all the TLDs in their sunrise period, and with only a few clicks a domain name can be registered.”
However, just like with the launch of the .eu TLD many years ago, the TMCH is being abused, says Mortelmans.
“I have seen requests being accepted by the TMCH that make me think the trademark was probably registered with the sole purpose of claiming a generic domain name,” he says.
Many of the domain name registrations under existing TLDs are defensive registrations, but some companies are already using their new TLDs as their primary websites. If the end result is a catchy and memorable domain name and the TLD is relevant for the industry in which the trademark owner operates, the new extensions off er some useful new opportunities.
Lieve De Kinder is marketing coordinator at
bNamed.net. She can be contacted at:
lieve@bnamed.net
Bart Mortelmans is managing director at bNamed. net. He can be contacted at:
bart@bnamed.net
Bart Mortelmans is the managing director of
bNamed.net, which he founded in 1999. He advises mainly on national and international domain name registrations and protecting intellectual property online. He works with clients on matters involving the centralisation and optimisation of their domain name portfolio, online trademark infringement and the automisation of their domain name registrations.
Trademarks & Brands Online
Volume 3, Issue 2
39
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