JURISDICTION REPORT: THE DOMINICAN REPUBLIC
REGISTRATION AND RENEWAL PROCESS FOR TRADE NAMES
Sharin Pablo de Roca and Deborah Guzmán JJ Roca & Asociados
Trade names have acquired a new significance in the Dominican Republic, as the government has been implementing a series of legal reforms with the aim of creating a climate of certainty, stability and efficiency for companies investing and operating their businesses in the country. With this goal in mind, Decree No. 326-06 was issued in order to accelerate the process of obtaining the registration of trade names before the National Office of Industrial Property (ONAPI).
Te registration and renewal process for trade names in the Dominican Republic are regulated by (i) the Industrial Property Law 20-00, (ii) the Implementation Regulation of the Industrial Property Law 20-00 and (iii) Decree No. 326-06 of August 8, 2006.
Registration of a trade name Industrial Property Law 20-00 (IPL) expressly states that the right to the exclusive use of a trade name is acquired by virtue of its first use in business, and the registration is merely declaratory. However, the registration of the same is mandatory when incorporating a company in the Dominican Republic.
Prior to Decree No. 326-06 the registration process for trade names was regulated by the same dispositions as are established in IPL for the registration of trademarks. Consequently, it took ONAPI approximately three to four months to issue the certificates of registration for trade names, counting from the filing date, if no actions were filed against the application by third parties, and if ONAPI did not object to the application. Tis was considered too long, given that this is the first step in the incorporation of a Dominican company. In an effort to attract foreign investment, the Dominican state undertook a series of reforms that included Decree No. 326-06.
Aſter the issuance of the decree, the procedure for obtaining a trade name registration in the Dominican Republic became easier, allowing the holder of the trade name to obtain the certificate of registration in a period no longer than five days, counting from the filing date of the application.
As per the procedure established by the decree, upon receipt of the application for registration of a trade name, label or emblem, the ONAPI shall issue the corresponding certificate of registration within a period not exceeding five days from said filing. Te application must contain the name and address of the applicant and, if the applicant is a company, the place of incorporation and the activities of the company that will be protected under said trade name.
Te ONAPI may object to the registration if it constitutes a violation of the IPL. If objected, a notification is sent to the applicant within five days
www.worldipreview.com
“IN ADDITION TO EXPEDITING THE REGISTRATION PROCESS FOR TRADE NAMES, THE DECREE HAS ELIMINATED THE POSSIBILITY FOR THIRD PARTIES TO FILE OPPOSITION ACTIONS AGAINST TRADE NAME APPLICATIONS.”
of the filing of the application, in order for the applicant to respond to the objection within 60 days aſter notification.
In addition to expediting the registration process for trade names, the decree has eliminated the possibility for third parties to file opposition actions against trade name applications. Contrary to the process followed for trademarks, the certificates of registration for trade names are granted before the information is published externally. Since publication is issued aſter the certificate of registration has been granted, the only action possible for third parties to oppose a registration is the presentation of a nullity action or a revocation of the right to claim the title action.
Renewal procedure Te duration and subsequent renewal of a trade name registration is 10 years. Te IPL grants a grace period of six months from the expiration date of the registration for the filing of the renewal application, in which case an established surcharge must be paid in addition to the corresponding renewal fee. Te registration of the trade name remains in full force during the grace period.
As per the IPL, the renewal application for trade names must be accompanied by a declaration of use of the trade name, as well as evidence of its use in the country. For trademarks, the renewal process has been simplified with the application of the Trademark Law Treaty. However, the same is not true of the renewal process for trade names, and ONAPI continues to request that the aforementioned documents accompany the application for the renewal of trade names.
Sharin Pablo de Roca is a partner in the IP department of JJ Roca & Asociados. She can be contacted at:
spablo@jjrocalaw.com
Deborah Guzman is an associate at JJ Roca & Asociados. She can be contacted at:
dguzman@jjrocalaw.com
World Intellectual Property Review May/June 2012 57
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84