TRADEMARK
PROTECTION

Laws

Industrial Property Law 20-00, enacted on May 8, 2000 and its ruling for application.

Conventions

Paris Convention for Industrial Property Protection.
The Agreement on Trade-Related Intellectual Property Rights Aspects (TRIPs).

Mark

Visible mark or symbol that distinguishes a company’s products or services from those of other companies.

Acquisition of rights

The exclusive right to use a mark is obtained upon registration.
Priority in obtaining the registration is given to who has been using the mark for a six- (6) months period or more, as of the earlier date. In the absence of use, preference is granted to the first applicant.

Registrable signs

The following, among others, can be registered: words, fantasy denominations, names, pseudonyms, business slogans, letters, numbers, monograms, figures, portraits, labels, shields, printings, vignettes, trimmings, lines or stripes, or combinations and arrangements of colors, tridimensional shapes, product containers or wrappings.

Arbitrary and distinctive geographic indications are also registrable, as long as they are not capable of creating confusion regarding the origin, source, qualities or characteristics of the products or services for which they are used.

Descriptive marks can be registered if they have acquired a distinctive character through its use (“secondary meaning”).

Right to Priority

Six (6) months from the first application in a country member of the Convention.

Inadmissible Marks

a) Usual or necessary forms;

b) Signs providing a functional or technical advantage;

c) Descriptive marks used in commerce to qualify or describe any feature of the products or services in question;

d) Generic designations;

e) Isolated colors;

f) Marks lacking distinctive character;

g) Marks contrary to moral standards or public order;

h) Symbols, words or expressions that ridicule or tend to ridicule people, ideas, religions or national symbols of other countries or international organizations;

i) Deceitful marks;

j) Reproduction or imitation of coats of arms, flags or other emblems, initials, denominations or abbreviations of denominations of any nation or any international organization, without the authorization of the competent authority of the appropriate nation or international organization;

k) Reproduction or imitation of official control signs or security adopted by a Nation or public entity;

l) The reproduction of coins or bills of legal currency within any country, titles, securities or other commercial documents, revenue stamps, or other stamps in general;

m) Signs including or reproducing medals, prizes, diplomas or other elements which may lead to believe that a reward has been awarded with respect to the appropriate products or services, except for rewards which have been truly offered to the registration´s applicant or its assignee and confirmed at the time of applying for the registration;

n) The denomination of a type of plant under protection in this or another country;

Notorious Marks

They are recognized and protected against reproduction, imitation, translation, association or dilution.

Classification

International Classification of Goods and Services (Nice agreement 8th edition)

Requirements for Registration

Contents of application:

• Name, address and state of incorporation of the applicant;
• Name and address of the representative in the country, if applicable;
• Mark denomination;
• Reproductions when applying for denomination or stylized marks, marks with a particular form, type or colors, or figurative marks, mixed or tridimensional marks with or without color;
• A list of the products or services the mark will protect, grouped by classes, according to the International classification; Multi class applications may be presented.
• Power of attorney, legalized by a Dominican Republic consul;
• Certified Copy of the priority application, if priority is claimed according to the Paris Convention;

Procedure

Once the application is presented, the examination of requirements and registrability are conducted. The results obtained will be informed to the applicant. Objections may be responded.

If the application is approved, it is then published. A period of 45 days is granted for oppositions to be presented as of publication. All oppositions are decided in a single decision to accept or reject the application.

Modification of the Application

While the application is pending, amendments can be effected, but amendments to the signs can only be made prior to publication.

Term

Ten (10) years from grant, renewable for equal and consecutive periods.

Protected Products

The list of products protected by a registration cannot be broadened. The list can be limited and the division of the registration can be requested.

Renewal

The following documents must be included when filing the renewal.

• Declaration of Use and Power of Attorney duly executed and legalized by a Dominican Consul.
• Evidence of Use of the mark in form of:
• Invoices and/or shipment documents; or
• Advertising materials showing local use of the mark.
• A 6-month grace period period for filing late renewal, with the corresponding surcharge.

In case this mark has not been used in view of the circumstance beyond the control of the owner, a declaration to that effect may be filed.

Use of the mark

A mark is in use when the products or services there under are commercialized or available in the national market under that brand, in the quantity and manner that normally corresponds, taking into account the market dimension, the product at hand, the nature of the products or services and the manner in which the commercialization is carried out.

Evidence of Use

Upon renewal of a registration, it is mandatory to file evidence of use, along with a sworn declaration thereof.

Exhaustion of Rights

Once a product is introduced in the market with the consent of the holder or a duly appointed person, the holder of a registered mark cannot prevent others to use it. With the condition that the products and packaging are not modified or altered in any way whatsoever.

Security Interest

A trademark registration may be offered to secure an obligation assumed by the owner. Such security may be seized or subject to other domain restrictions.

Licensing Use

The effects of use licenses are enforceable against third parties once recorded at the National Office of Industrial Property. Only registered licensees can bring actions against third parties for violation of trademarks rights regarding the registered trademark, without prejudice of the owner´s rights.

In the absence of an agreement between the parties, supplementary dispositions are applied regarding term, exclusivity, territory extension, protected goods and services, the capacity to transfer licenses and grant sub-licenses.

Assignment

The rights of a registered mark can be transferred to third parties. The assignment is opposable to third parties once registered in the National Office of Industrial Property.

The transfer can be made with or without the business (goodwill), in all or a part of the business. Commercial emblems should be jointly transferred with the sign to which the mark is associated.

Cancellation of Registration for Non-Use of the Mark.

A mark not used during the three years prior to the action, can be cancelled. Non-use is justifiable.

Nullity

The registration can be annulled upon petition of the interested party five (5) years from the concession, unless it was performed in bad faith or it is affected by intrinsical inadmissibility.

Claiming Action

A registered trademark or one in process by a person not possessing the right can be claimed by he who considers being its rightful owner. Resulting in the transference of the application or registration in process.

This action will prescribe five (5) years from the granting of the registration or two (2) years from the moment in which the mark begins to be used in the country (whichever occurs the latest).

Penal Sanctions

Correctional prison and fines apply to those that incur in the violation of rights related to registered marks.

Civil Action

The holder of the protected right can initiate a civil action against any infractor. This action prescribes two (2) years after having knowledge of the infraction or five (5) years after the last infraction was committed (whatever happens first).

Required Measures (among others)

• Cease of infringing actions;
• Compensate the damages caused by these actions;
• Seize of infractious objects;
• Determine the ownership of seized objects;
• Destroy seized objects;

Conservatory Measures

Disloyal competition acts are recognized by use of distinctive elements.
The action may be initiated before the Court four (4) years from the moment in which the disloyal action was committed.

Other Registrations

Collective Marks, Certification Marks, Denominations of Origin, Commercial Names and Commercial Emblems (associated to the mark it is used with).