Canada: What Do Trademark Owners Need To Know About The Trademark Clearinghouse For New gTLDs?

The Internet Committee for Assigned Names and Numbers (ICANN), a nonprofit organization that oversees the use of Internet domains, has recently implemented a new generic Top-Level Domain (gTLD) program for the purpose of increasing competition in the domain name space.  Given that this program may also increase incidents of cybersquatting, or the temptation to misappropriate a legitimate trademark owner's mark, ICANN has built into its new gTLD program several enhanced trademark rights mechanisms, including a Trademark Clearinghouse.

What is the Trademark Clearinghouse?

The Trademark Clearinghouse is a global repository for trademark data.  The Trademark Clearinghouse providers will verify trademark data from multiple global regions and maintain a database with the verified trademark records.  Trademark owners may submit to the Clearinghouse nationally or regionally registered word marks, court or other judicially validated common law word marks, and word marks protected by statute or treaty (for example, names of the Red Cross and the United Nations).  Other marks that constitute intellectual property may be recorded in the Clearinghouse by arrangement with a registry but it is unlikely that this scenario will be a frequent occurrence.

Once trademark rights are validated by the Clearinghouse, the owner may access the various protection mechanisms that are available with respect to the new gTLDs.  It should be noted that the protection mechanisms afforded to trademark registrations do not extend to applications for registrations, marks in opposition or registered marks that were the subject of successful cancellation or invalidation proceedings.

Although trademark owners may consider the Clearinghouse to be an effective tool for protecting their rights in the rapidly expanding gTLD space, benefits and costs should be weighed in order to make an informed decision about whether to record their trademarks with the Clearinghouse.

What are the Benefits?

  1. Sunrise Periods:  Sunrise periods allow trademark owners an advance opportunity to register domain names corresponding to their marks before names are generally available to the public. New gTLD registries are required to offer a Sunrise period of at least 30 days.  In order to qualify, a trademark owner must submit a declaration stating that the trademark is in use and a specimen of use, such as an image showing the trademark displayed on a product or packaging of the product, or an example of the mark displayed on a website, in an advertisement or in other promotional materials.  During the Sunrise period, a notice will be sent to the trademark owner if another party applies for a domain name that is an identical match to the mark recorded in the Clearinghouse. However, trademark owners should note that as the Clearinghouse verifies and maintains information from many jurisdictions, several different parties may have legitimate rights in the same trademark.  Therefore, if multiple mark owners file for the same domain name during the Sunrise period, allocation of domain names in a particular gTLD will occur according to the registry policies for that gTLD.
  2. The Trademark Claims Period:  The Trademark Claims period follows the Sunrise period and runs for at least the first 90 days after the general launch of the gTLD.  During the Trademark Claims period, domain name applicants will receive a notification if their requested domain name is an identical match to a trademark recorded in the Clearinghouse.  If the notified party goes ahead and registers the domain name, the Trademark Clearinghouse will send a notice to those trademark holders with matching records in the Clearinghouse, informing them that a party has registered the domain name.
  3. Uniform Rapid Suspension Service: ICANN is planning to implement a rights protection mechanism for trademark rights holders experiencing the most clear-cut cases of infringement.  There is no requirement for a trademark to be recorded in the Clearinghouse in order to be protected under the Uniform Rapid Suspension Service, but the mark must be eligible for inclusion in the Clearinghouse and there must be proof of use of the mark.  A complaint mechanism will also be available to trademark owners in order to report gTLD registries that consistently permit third parties to register infringing second-level domain names.

What are the Costs?

The fees charged by the Clearinghouse vary depending on the years the trademark recordal is requested with the Clearinghouse and whether or not a Trademark Agent attends to the recordal.

If a trademark owner requests recordal directly with the Clearinghouse, a one-year period costs $150.00 USD per mark, a three-year period costs 435.00 USD per mark, and a five-year period costs $725.00 USD per mark.

If a Trademark Agent attends to the trademark recordal, the fees vary depending on the number of status points the Agent has been granted by the Clearinghouse.  Status points are accumulated in accordance with the number of registrations the Agent has recorded with the Clearinghouse. Since an Agent is required to submit a minimum pre-payment deposit of $15,000.00 USD, there may be some Agents who opt out of this type of filing.   At the onset, with minimum status points, the filing fees for Agents are: $145.00 USD per mark for a one-year recordal, $435.00 USD per mark for a three-year recordal and $725.00 USD per mark for a five-year recordal.  Additional service fees may also be charged for attending to the recordal.

Should I Record my Trademarks with the Clearinghouse?

There are obvious advantages to a trademark owner who records their trademarks with the Trademark Clearinghouse.  The Clearinghouse accepts and validates trademark ownership information and provides for Sunrise and Trademark Claims services.

For trademark owners that wish to acquire registration of a new gTLD domain identical to their registered trademark, recordal of the mark with the Clearinghouse makes sense.  The trademark owner may secure the gTLD domain during the Sunrise period, before the domain becomes available to others.  The Claims period may also prove useful to a trademark owner as a deterrent to third parties who may wish for dubious reasons to register a gTLD domain that is identical to their trademark and as a time-limited domain registration notification service.

However, it may be more cost effective for a trademark owner to utilize more traditional methods of policing their rights, such as ongoing trademark and domain name watch services, infringement proceedings and established domain name dispute resolutions proceedings, such as Uniform Domain-Name Dispute-Resolution (UDRP).  Most importantly, a trademark owner should ensure that their trademark is registered in all jurisdictions in which it is used, as registration in addition to use fortifies the legal remedies available to an owner in enforcing their rights.

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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