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
27 Oct 2016, Seminar, Toronto, Canada

Please join members of the Blakes Commercial Real Estate group as they discuss five key provisions of a commercial real estate purchase agreement that are often the subject of much negotiation but are sometimes misunderstood.

1 Nov 2016, Seminar, Toronto, Canada

What is the emotional culture of your organization?

Every organization and workplace has an emotional culture that can have an impact on everything from employee performance to customer or client satisfaction.

3 Nov 2016, Seminar, Toronto, Canada

Join leading lawyers from the Blakes Pensions, Benefits & Executive Compensation group as they discuss recent updates and legal developments in pension and employee benefits law as well as strategies to identify and minimize common risks.

In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.