TRADEMARKS FILING AND PROSECUTION DOMINICAN REPUBLIC
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Dominican Republic IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Dominican Republic IP Office. In Dominican Republic, trademark protection is granted according to the provisions of Law No. 20-00 on Industrial Property, Dominican Republic
Trademark in Dominican Republic may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark typically consists of a name, word, phrase, logo, symbol, design, image, or a combination of these elements. In addition to conventional trademarks, Dominican Republic also allows the registration of non-traditional trademarks, which may include marks based on colour, smell, or sound.
A registered trademark grants the owner exclusive rights to use it in relation to the registered goods or services, or to authorize another party to use it in exchange for payment. Trademark protection helps prevent unfair competition, such as counterfeiting, by prohibiting others from using similar or identical marks to market inferior or unrelated products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Law No. 20-00 on Industrial Property, Dominican Republic |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | NO |
| Multi class system | YES |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and simply signed Power of Attorney. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of registration |
| Renewal term | 10 years |
Trademark searches in Dominican Republic
A trademark search in Dominican Republic can be conducted for both word and device marks. It is advisable to carry out a search prior to filing a trademark application to determine the availability of the mark and to identify any prior identical or similar trademarks on the register. This helps to avoid objections or oppositions during the registration process.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Dominican Republic.
Filing trademark applications in Dominican Republic
A person may file multi-class or single class trademark application in Dominican Republic.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Dominican Republic
Ordinary trademark applications filed in Dominican Republic are applications without claiming any priority. Multi class trademark applications may also be filed in Dominican Republic. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Dominican Republic /Convention trademark applications Dominican Republic:
A priority trademark application may be filed in Dominican Republic. A priority trademark application should be filed in Dominican Republic within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Dominican Republic within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Dominican Republic follows the nice classification of classes. Intellectual property office of Dominican Republic uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.
Trademark Examination in Dominican Republic
Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds of refusal.
Article 74.- Trademarks Inadmissible because of Rights of Third Parties
A symbol cannot be registered as a trademark when it would affect some right of a third
party. The following cases, among others, will be considered in which the symbol intended
for registration:
a) is identical to, or resembles to the point that it could create confusion, a trademark that is registered or in the registration process within the terms of Article 75 by a third party as of a previous date, which distinguishes the same products or services, or products or services that are different but might be associated or connected with those which the earlier trademark distinguishes.
b) is identical to or resembles to the point that it could create confusion, a trademark that is not registered but is used by a third party who would have better right to obtain the registry, so long as the trademark is for the same products or services, or for products or services that are different but might be associated or connected with those that the utilized trademark distinguishes.
c) is identical to or resembles a commercial name, a sign or an emblem used or registered in this country by a third party as of an earlier date, so long as confusion might be caused, given the circumstances of the case.
d) constitutes the complete or partial reproduction, imitation, translation or transcription of a distinctive symbol which is widely known in the country by the relevant sector of the public, whatever may be the products or services to which the symbol is applied, when its use might cause confusion, a risk of association with that third party, taking unfair advantage of the notoriety of the symbol, or the dilution of the distinctive power of its commercial or publicity value.
e) would affect the personal rights of a third party, especially regarding the name, signature, title, hypocoristic or portrait of a person different from the one applying for the registration, unless the consent of that person be confirmed or, if he or she has died, that of his or her closest descendants or antecedents.
f) would affect the right to the name, image or prestige of a corporation or a local, regional or national entity or collectively, unless the express consent of that person or of the competent authority of that entity or collectively be confirmed.
g) would infringe on copyright or a right to industrial property that pre-exists or has been applied for so as to perpetrate or consolidate acts of unfair competition.
Trademark Opposition in Dominican Republic
Any interested person, within 45 days from the date of publication of the mark in the Official Bulletin, has the right to file to the Controller an opposition to the registration of the mark.
Trademark registration in Dominican Republic
After the examination, opposition process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of registration and the registration certificate is issued.
Trademark Renewal in Dominican Republic
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.