• Trade-Mark Clearinghouse: Rare Chance for Advance Protection Online Should Be Considered By All Trade-Mark Owners
  • June 17, 2013 | Authors: Daniel M. Anthony; Erin T. Creber
  • Law Firm: Smart & Biggar/Fetherstonhaugh - Ottawa Office
  • The Trade-mark Clearinghouse, which launched on March 26, 2013, is an important IP rights protection mechanism that all trade-mark owners should consider in view of the rollout in the coming months of new generic Top Level Domains (gTLDs), which will significantly expand the scope of domain names available for websites on the Internet.

    As has been widely reported, ICANN received over 1,900 applications for new gTLDs during last year’s open gTLD application process covering strings for many generic terms such as .auto, .app and .map. The approval of these new gTLDs has begun, and the first are expected to launch as early as this autumn with additional gTLDs becoming active on a weekly basis over the next several years.

    The Trade-mark Clearinghouse serves as a repository of verified trade-mark information that is connected to all new open gTLD registries and entitles trade-mark rights holders to (i) access sunrise pre-registration periods, and (ii) be notified of third parties registering domains on the new gTLDs that correspond to their trade-marks.

    (i) Sunrise pre-registration periods. A minimum 30-day pre-registration period (or sunrise period) is mandated for all new public gTLDs during which trade-mark holders may register domains that are an exact match of their trade-marks. For example, a car manufacturer that records its mark CARBRAND in the Trade-mark Clearinghouse could apply to pre-register the domain name CARBRAND.auto in advance of the general public during the launch of the .auto gTLD.

    (ii) Notice of third-party corresponding domain names. During the first 90 days after any new gTLD is made open to the general public, a warning will be provided to anyone seeking to register a domain name in the gTLD that matches a trade-mark recorded in the Trade-mark Clearinghouse. Should the domain name registration be completed, a notice will be sent to the trade-mark owner who is then free to take steps to address any infringing use or to recover the domain name if appropriate.

    Recordal in the Clearinghouse is likely most beneficial for trade-mark owners who (i) plan to register a trade-mark as a domain name in one or more of the new gTLDs (e.g. MYMARK.food or MYMARK.app), or (ii) own trade-marks that are expected to be of interest to third parties as domain names, including by the general public, cybersquatters, and parties with trade-mark rights in the same mark in a different jurisdiction or for different goods.

    We strongly recommend that our clients review their trade-mark portfolios to determine which marks are bested suited for recordal in the Trade-mark Clearinghouse. We can assist you to make this process as efficient as possible. Recordal is available for virtually any trade-mark consisting predominantly of words (i.e. logos cannot be recorded), provided that the mark (i) has been registered in any country, (ii) is protected by statute or treaty, or (iii) has been verified by a court as a common law trade-mark.

    Early experience indicates that it takes roughly one to three months to have a mark recorded in the Trade-mark Clearinghouse. Therefore, it is prudent to have marks recorded well in advance of the launch of new gTLDs.

    The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.