Canada: Move-In Condition: Trademark Clearinghouse Set To Launch

In anticipation of the launch of potentially hundreds of new sponsored generic Top-Level Domains (gTLDs) (see our Blakes Bulletin on Intellectual Property: Dot Landrush – ICANN Releases List of TLD Applications) later this year, the Internet Corporation for Assigned Names and Numbers (ICANN) has established a global Trademark Clearinghouse (Clearinghouse) to assist trade-mark owners in protecting their rights. The Clearinghouse is set to begin accepting registrations on March 26, 2013.

What is the Clearinghouse?

The Clearinghouse is a centralized database of verified information on trade-marks. Beginning March 26, 2013, trade-mark owners (or agents acting on their behalf) can record certain trade-marks in the Clearinghouse. The Clearinghouse is intended to minimize the burdens on trade-mark owners by allowing them to record their trade-mark information in a single repository, rather than with each new gTLD registry.

Why Record With the Clearinghouse?

Recordal of a trade-mark in the Clearinghouse is a prerequisite to the owner of that trade-mark registering the trade-mark as domain names in a new gTLD registry during the "Sunrise" registration period.

As well, recordal of a trade-mark in the Clearinghouse will ensure that the owner of the trade-mark will receive notification when a domain name registration that is an exact match to that trade-mark is made in a new gTLD registry.

What Trade-marks May Be Recorded?

Inclusion in the Clearinghouse is limited to: (1) nationally or regionally registered trade-marks; (2) court-validated trade-marks; and (3) trade-marks protected by treaty or statute.

Trade-marks comprising both of design and text elements may be recorded, provided that:

  • the trade-mark includes characters in the form of letters, numbers, keyboard signs and punctuation marks;
  • the characters are predominant;
  • the characters are clearly separable from the design elements; and
  • the characters are included in the trade-mark record submitted to the Clearinghouse in the same order they appear in the mark

Only the textual elements of the mark will be considered for purposes of Sunrise registration periods and Trade-mark Claims Services. Trade-marks that do not contain any letters, words, numerals or Domain Name System-valid characters may not be registered in the Clearinghouse. The Clearinghouse does not extend to patent, design, know-how, or trade secret, or other intellectual property rights which cannot be represented within the technical limits of the Domain Name System. Other types of trade-marks may be accepted for a particular new gTLD registry, if the registry requests that such marks be included.

Recordal is effected by providing the Clearinghouse with certain information about the trade-mark at issue, and paying the required fee per mark. Trade-marks can be recorded for periods of one, three, or five years. Payment for recordal in the Clearinghouse does not cover the costs of Sunrise registration or participation in the Claims Service.

What a Clearinghouse Recordal Does Not Do

It is important to note that recordal of a trade-mark in the Clearinghouse does not prevent or block others from registering that trade-mark as a domain name in any of the new gTLD registries. Rather, the Clearinghouse will serve two primary functions:

  • to authenticate and validate trade-marks entered in the Clearinghouse by trade-mark owners; and
  • to serve as a database to provide information to the new gTLD registries in support of pre-launch Sunrise periods, and Claims Services.

Since the Clearinghouse is simply a repository of verified rights information, inclusion in the Clearinghouse is not proof of any right, and does not create any legal rights.

Sunrise Periods

A Sunrise registration period is a set period of time during which the owner of a trade-mark may register a domain name incorporating that trade-mark before any other person may do so. It provides rights holders with priority registration. As part of the new gTLD program, a Sunrise period of at least 30 days must be made available to the owners of all trade-marks in the Clearinghouse. Negotiations are ongoing regarding the extension of the minimum Sunrise period to 60 days.

However, in order to register during a Sunrise period, trade-mark owners must, in addition to meeting the other criteria for inclusion in the Clearinghouse and supplying the required information, provide acceptable "proof of use" of the trade-mark and a signed declaration of use. The type of evidence which will be considered "proof of use" includes labels, tags, or containers for goods, or advertising and marketing material, including brochures, pamphlets, and catalogues for services.

Trade-mark Claims Services

Recordal in the Clearinghouse will also entitle a trade-mark owner to receive notice when a registration of a domain name that exactly matches a trade-mark registered in the Clearinghouse is made within the Sunrise period, or during a "claims period" which will be the first 60 days that domain name registrations are available to the general public in a gTLD registry. The trade-mark "Claims Services" will warn a potential registrant that it is attempting to register a domain name that matches a trade-mark in the Clearinghouse. Only exact matches will generate such a notice. If, after receiving and accepting the notice, the registrant registers the domain name, the trade-mark owner will receive notification so that it may take any appropriate action.

Rights Protection Mechanisms

In addition to the Clearinghouse, there are additional rights protection mechanisms (RPMs) which ICANN has mandated as part of the new gTLD program. These RPMs are facilitated by inclusion in the Clearinghouse and the notice provisions of the Claims Services.

Although the existing Uniform Domain Name Dispute Resolution Policy (UDRP) will apply to all new gTLDs, ICANN has also introduced a Uniform Rapid Suspension System (URS). The URS is intended to be a simpler, faster, and more cost-effective complement to the UDRP. Specifically, the length of a URS complaint is limited to 500 words and fees are greatly reduced in comparison to the UDRP.

The URS will have its limitations and is intended to address only the clearest cases of trade-mark abuse. The only remedy a panel can grant in a URS proceeding is a suspension of the domain name registration for the duration of the registration period. A panel cannot order transfer of a domain name under a URS proceeding.

In addition to the UDRP and URS, a Post Delegation Dispute Resolution Procedure (PDDRP) will apply to new gTLD registries. The PDDRP is an administrative option for trade-mark owners to file an objection against the operator of a gTLD registry whose "affirmative conduct" in the operation of its gTLD is alleged to cause or materially contribute to trade-mark abuse. It is meant to be used for cases in which the operator of the registry profits from bad faith registrations.

What To Do Now

A trade-mark owner should consider whether it wishes to have trade-marks entered in the Clearinghouse. Specifically, it should review its trade-mark portfolio and identify trade-marks for inclusion. It should also begin compiling the other information required for registering with the Clearinghouse. Where a trade-mark owner desires to file evidence of use to position itself to take advantage of one or more Sunrise periods, it should carefully ensure that the evidence satisfies the conditions mandated for the Clearinghouse.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
16 Oct 2018, Seminar, Toronto, Canada

Join Blakes lawyers for our 10th annual overview of recent legal and regulatory developments and practical strategies to navigate the changing regulation of Canada’s payments industry.

26 Oct 2018, Other, Vancouver, Canada

Cybersecurity, including data privacy and security obligations, has become a critical chapter in every company’s risk management playbook.

30 Oct 2018, Other, Toronto, Canada

Please join us for discussions on recent updates and legal developments in pension and employee benefits as well as employment law issues.

Similar Articles
Relevancy Powered by MondaqAI
Blaney McMurtry LLP
Clark Wilson LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Blaney McMurtry LLP
Clark Wilson LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions