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.

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