STRENGTHENING BORDER MEASURES JURISDICTION REPORT: THE DOMINICAN REPUBLIC
Sharin Pablo de Roca and Deborah Guzmán JJ Roca & Asociados
Border measures have been widely covered in the global landscape under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement of the World Trade Organization and under the Free Trade Agreement between the US, Central America and the Dominican Republic (DR-CAFTA). Under the TRIPS Agreement, members have an obligation to provide for the necessary internal procedures that would help in the prevention of counterfeiting. Under the DR-CAFTA, members have a similar obligation. Te customs authorities of the Dominican Republic, in an attempt to comply with these international obligations, have created a registry for the owners of IP rights.
As indicated in TRIPS, all members shall “adopt procedures to enable a right holder, who has valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods may take place, to lodge an application in writing with competent authorities, administrative or judicial, for the suspension by the customs authorities of the release into free circulation of such goods. Members may enable such an application to be made in respect of goods which involve other infringements of IP rights, provided that the requirements of this Section are met. Members may also provide for corresponding procedures concerning the suspension by the customs authorities of the release of infringing goods destined for exportation from their territories”.
Chapter 15 of DR-CAFTA lays down special requirements related to border measures. If the customs authorities suspect that goods are counterfeits, the DR-CAFTA allows them to tell the owner of the IP right (i) the name and address of the consignor, (ii) the importer and the consignee, and (iii) the quantity of goods concerned. Moreover, it allows the competent authorities to initiate border measures with respect to suspected goods, without requiring formal application by the rights holder.
Tese measures, established by DR-CAFTA, were subsequently supported by the implementation of DR-CAFTA Law No. 424-06, which incorporated in Article 174 of our Industrial Property Law 20-00 the possibility for a holder to request the customs authorities of Dominican Republic (DGA) to suspend the clearance of allegedly counterfeit or confusingly similar goods, as long as evidence of the presumed infringement is presented. Moreover, the DGA may act on its own behalf when it has reasonable grounds to consider that merchandise imported, exported or in transit is considered suspicious, and therefore proceed with the retention of such merchandise.
IP rights registry As per the provisions contained in the DR-CAFTA, on August 4, 2010, the DGA issued Resolution No. 01-2010, aimed at providing support to the work of inspection and/or retention in customs of goods affected with a
56 World Intellectual Property Review July/August 2012
“THE DGA MAY ACT ON ITS OWN BEHALF WHEN IT HAS REASONABLE GROUNDS TO CONSIDER THAT MERCHANDISE IMPORTED, EXPORTED OR IN TRANSIT IS CONSIDERED SUSPICIOUS.”
presumption of violation of IP rights, through the creation of a registry of IP rights holders before said institution. Tis resolution was subsequently amended by Resolution No. 02-2010 dated September 30, 2010.
Tis new registry is available for all owners of trademarks and copyrights protected by national laws, treaties and international agreements subscribed to and ratified by the Dominican Republic. Any owner that applies for the registration of its acquired rights before the DGA, as per Resolution No. 01-2010, must comply with the following requirements:
Presentation of certified copies of the Certificate of Registration of their trademark or copyright, issued by the National Office of Industrial Property (ONAPI) or the National Office of Copyright (ONDA);
Graphic representation of the products in digital format; and
Guidelines, in digital format, that would allow DGA to recognise original merchandise and be able to distinguish it from counterfeit merchandise.
Once the documentation is presented, the DGA will proceed with the registration in its database of the owners of IP rights, which will be recorded with the issuance of the corresponding Certificate of Registration by the Department of Intellectual Property of the DGA.
Te duration of this registration is two years, counted from the day of issuance of the Certificate of Registration. Tis registration may be renewed for a subsequent period of two years.
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 .
www.worldipreview.com
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