Dominican trademark law, dated December 30, 1997, establishes that a trademark can be constituted of words alone or distinctive symbols used by merchants to distinguish their products from goods and services from different sources. Names, corporate names, numbers and letters are registrable only if they constitute a special distinctive mark.

According to Law 1450, all application must contain the following requirements:

  • Name and detailed description of the trademark
  • Class to be applied for (one application per class)
  • Name of the applicant
  • Full address of the applicant's principal headquarters
  • 10 prints of the trademark, black and white or color depending on the amount of protection pursued.
  • Power of Attorney duly executed, notarized by a U.S. notary public and legalized by a Dominican Counsel.
  • Certified copy of the original application or registration certificate if international Convention Priority should be claimed. This document should also be duly notarized, legalized by a Dominican Counsel and translated into Spanish
  • The application must also contain the registration term, which can be of 5, 10, 15 or 29 years renewable for the same or a different period of time.

The Application Process

Although Dominican trademark legislation refers to one simple filing to apply for a trademark, the Ministry of Industry and Commerce has created an obligatory preliminary search to avoid duplicate registrations. This "Availability Search" divides the application process in two, a preliminary application and a confirmation of the application. (In theory, the date of application is the filing date of the search. However, if an application should encounter obstacles, the date of application has been accepted by the trademark office.)

If the preliminary application is accepted by the authorities, applicant has 30 days to file the confirmation, subject to loss of application rights. Once confirmed, all applications are published on a monthly basis in a national newspaper to open a term for opposition actions.

Opposition Actions

All interested parties have a period of 45 days from the date of publication to oppose these marks which infringe their rights. A writ shall be submitted containing the legal basis for the rejection of the trademark. Usually, three writs are required to complete the opposition process: a preliminary writ for the purpose of meeting the opposition deadline, a formal writ containing legal basis and arguments and a reply to defense arguments.

Cancellation

The cancellation of a trademark can be requested within three years from the date of issuance of the challenged trademark. According to article 6 bis of the Paris Convention revised at The Hague in 1925, the cancellation of a trademark obtained in bad faith can be solicited at any time.

Use

Dominican law requires all trademarks to be used during the first year of registration. Failure to use the trademark may result in annulment but, since our law does not require filing proof of use, the use of the trademark at a later date beyond the first year will prevent this type of cancellation action.

Trademark authorities do not act on their own initiative , this annulment must be requested by a third party.

Non Registrable Trademarks

Article 8 of law 1450 establishes the following prohibitions:

1. Coat of arms; public or official medals, either domestic or foreign; letters, words or distinctive marks used by the Dominican state.
2. Any firm name or trade name which the applicant is not legally entitled to use.
3. Indications of origin.
4. Words, images or pictures offensive to the public.
5. Words, images or pictures referring to a person without his or her authorization.
6. Reproduction of any other registered trademark for products in the same class.
7. Full or partial imitation of a registered trademark for goods in the same class that might lead the consumer to confusion or error.
8. The form or color given by the manufacture to its products or the packaging.
9. Terms or expressions which are commonly used.
10. Terms used to indicate the nature of the products of the class they belong to.
11. Geographical names when used alone as a mark.

The content of this article is intended to provide general information on the subject matter. It is therefore not a substitute for specialist advice.

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