JURISDICTION REPORT: DOMINICAN REPUBLIC KEEPING IT SIMPLE: NEW TRADEMARK TREATY
Sharin Pablo de Roca and Deborah Guzmán JJ Roca & Asociados
Te Dominican Republic, as a complement to the Dominican Republic- Central America Free Trade Agreement (DR-CAFTA), ratified the Trademark Law Treaty (TLT) on September 3, 2011. Te treaty entered into full effect on December 13, 2011. Te implementation of the TLT in the Dominican Republic has implied a simplification of the process, specifically the leniency of the documentation and formalities required by the National Office of Industrial Property (ONAPI), for the renewal of trademark registrations, by eliminating formal requirements that are considered unnecessary obstacles in the renewal process.
Before the implementation of the TLT, our Industrial Property Law 20-00 established for the filing of a renewal application, a mandatory presentation of a sworn statement or declaration, duly translated into Spanish and apostilled in the country of origin of the document, affirming the frequency and manner of use of the trademark, as well as the evidence of use of the mark in the country. Evidence of use usually consisted of invoices, advertisements, packaging, and other documents that could prove the use of the mark. Both the sworn declaration and the evidence of use were absolutely necessary for the renewal of a trademark in the Dominican Republic. The evidence was examined thoroughly and sometimes faced objection if it was considered insufficient or not recent enough. It was often the case that the examining officer in ONAPI would request further evidence of use of the trademark in Dominican territory.
Since the ratification of the TLT, the renewal process of trademark registrations has changed considerably, specifically in the documentation required by ONAPI.
ONAPI will no longer require the presentation of a sworn statement or declaration of use and evidence of use when filing the application for renewal, or in the process of renewal. Te only document now required is the application for renewal, with all the pertinent information regarding the trademark and its owner. ONAPI may require additional documentation to be filed only when in reasonable doubt of the veracity of any indication or element contained in the renewal request. If ONAPI considers that the documentation must be filed, it is exempt from legalisation or apostille.
Another significant change made to our Industrial Property Law 20-00 regarding renewals is the allowance of one application for the renewal of several registrations, as long as the registrations are all in the name of the same holder. Despite the presentation of one application for several registrations, the ONAPI will charge for every one of the registrations presented under the renewal application.
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“BOTH THE SWORN DECLARATION AND THE EVIDENCE OF USE WERE ABSOLUTELY NECESSARY FOR THE RENEWAL OF A TRADEMARK IN THE DOMINICAN REPUBLIC.”
Regarding the duration period of a registration and the renewals thereaſter, the TLT establishes a period of 10 years for each. In the case of the Dominican Republic, this does not change things since the Industrial Property Law 20-00 already contemplated 10 years for the registration and subsequent renewal.
Finally, an important fact concerning renewals in the Dominican Republic is the possibility to file for the renewal of the registration once it has expired. Our Industrial Property Law 20-00 grants a grace period of six months, counted from the expiration date of the registration, for the filing of the renewal application. Te registration of a trademark remains in full force during the grace period. Te applicant must file for renewal before the six months are over, in which case, in addition to the corresponding renewal fee, the established surcharge must be paid. Tis grants trademark owners an additional six-month period of protection in Dominican territory.
Sharin Pablo de Roca is a partner in the IP department of JJ Roca & Asociados. She can be contacted at:
spablo@jjrocalaw.com
Deborah Guzmán is an associate at JJ Roca & Asociados. She can be contacted at:
dguzman@jjrocalaw.com
World Intellectual Property Review March/April 2012 47
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