Canada: ICANN’s Trademarks Clearinghouse Opens For Business

Last Updated: May 1 2013
Article by Lisa Martz

Most Read Contributor in Canada, September 2018

With the launch of the Trademarks Clearinghouse, brand owners can now stake their territory In the brave new world of expanded generic top level domain names ("gTLD's").  The Internet Corporation for Assigned Names and Numbers ("ICANN"), the non-profit organization that manages and coordinates the system of domain names and IP addresses used on the internet, has put into operation what it calls "the most important rights protection mechanism built into ICANN's new gTLD program".

The Trademarks Clearinghouse ("Clearinghouse"), which is operated by Deloitte and IBM, is a centralized database of information submitted by brand owners that will be used by the ultimate operators of the new gTLD's as part of their process of trying to avoid the infringement of trademark rights through the domain names applied for under their gTLD.  Through the Clearinghouse, ICANN  is attempting to address brand owners' concerns about the increased risk of cybersquatting that comes with the introduction of the new gTLD's.

Key Point for Brand Owners

With many new gTLD's likely to be operating, the Clearinghouse offers brand owners a high level way of protecting their rights instead of having to take action (through domain name dispute resolution arbitrations or legal proceedings) regarding individual domain names.

In light of the pending release of the first new gTLD's (expected later this year), brand owners should analyze their trademark holdings and determine if they would benefit from the trademark rights protection mechanisms that the Clearinghouse offers. While the Clearinghouse is not a substitute for other protection mechanisms, such as domain name monitoring services, it may be an important tool for brand owners in protecting their marks.

How the Trademarks Clearinghouse Will Work

The Clearinghouse is intended to be an inexpensive central repository for trademark data. It will authenticate and store the trademark data and disseminate it to all new gTLD registries for use in connection with the two mandatory trademark rights protection mechanisms that all gTLD registrars must provide, as follows.

  • Sunrise Services: The Sunrise Services will ensure that brand owners who have registered their trademark with the Clearinghouse are given an advance opportunity to register a domain name incorporating their trademark before the opportunity to register domain names under a gTLD is open to the general public.
  • Trademarks Claims Services: The Trademarks Claims Services will ensure that anyone who applies to register a domain name that matches a trademark registered with the Clearinghouse will receive a notification of the trademark holders rights.  To proceed, the applicant must warrant that the registration and use of the domain name is not infringing.  If the domain name is registered, the trademark holder will be notified.

Only brand owners who submit their trademark information to the Clearinghouse will get the benefit of these services.

Registration with the Trademarks Clearinghouse

To register with the Clearinghouse, the owner of an issued trademark must submit:

  • a copy of the trademark registration (or other documentation showing ownership information, registration number and jurisdiction where issued);
  • evidence of the use of the trademark in connection with the offering for sale of goods or services prior to the submission to the Clearinghouse (including a signed declaration and a single specimen of how the mark is used);
  • an affidavit or other sworn statement declaring that the information is true and has not been submitted for an improper purpose and agreeing to keep the information provided current (including advising of transfer of ownership or abandonment of the trademark, failing which penalties may be imposed); and
  • the required filing fee.

For a trademark validated through a court or other judicial proceeding, the trademark owner must submit filed court documents evidencing this, and for a trademark protected by statute or treaty, a copy of the relevant portion of these must be submitted.

The basic fee structure for submissions to the Clearinghouse is US$150 for a 1-year registration, US$435 for a 3-year registration and US$725 for a 5-year registration.  Volume discounts using a system of "Status Points" earned by registering or renewing trademarks in the Clearinghouse are also available (for details see:

ICANN received 1,930 applications for new gTLD's for domains (including many applications in non-English characters) ranging from types of consumer products and services (.car, .movie, .hotel),to industry or social sectors (.bank, .church, .career), to geographic names (.nyc, .berlin), to brands (.chanel, .nike, .apple) (a complete list of the gTLD's applied for can be found at: These applications are now under review by ICANN to determine if the applicants meet the necessary criteria (including technical and financial capacity).

There are currently no set deadlines by which any of the new gTLD's will be launched, as each application to operate a new gTLD must navigate its way through the evaluation process.  However, ICANN projects that the first new gTLD registries should be up and running later this year.  Brand owners who want to take advantage of the preventive protection offered by the Clearinghouse would therefore do well to register their information as soon as possible.

To view original article, please click here

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.

Similar Articles
Relevancy Powered by MondaqAI
Fogler, Rubinoff LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Fogler, Rubinoff 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