JURISDICTION REPORT: DOMINICAN REPUBLIC
CAN A CIRCLE BE A TRADEMARK?
Jaime R. Angeles Angeles & Lugo Lovatón
As we know, a trademark can consist of words, letters, numbers, figures, lines; in the Dominican Republic an applicant can also obtain sounds and smells as trademarks. In a judgment made public in August 2013, the Court of Appeals of Santo Domingo confirmed an administrative decision that denied the registration of a circle.
In February 2009, a company filed the application for a trademark ‘circle design’. Tis circle contained four other circles in the centre. An important competitor filed an opposition against the circle design application, arguing that the sign consisted of a “simple geometric form” without the distinctiveness needed for trademark protection. Also included in its arguments was a claim that circles cannot be appropriated by any particular person (company) and that ‘circles’ are used only as ornamental (decorative) elements and not as trademarks.
Te opposition first was not accepted by the Dominican Trademark Office (ONAPI) but later the office accepted an administrative appeal. ONAPI founded its decision on similar arguments and added that the “geometric figure (circle)” is in the classification of very simple signs and over which you cannot acquire exclusivity.
Te Court of Appeals in a contradictory decision recognised that Dominican law permits that any kind of signs are eligible to become a trademark, and it does not matter if the “geometric figure is simple or complex”, but even so, the trademark has to distinguish its business origin in order to be admitted for registration and protection. Te court decided against the applicant for the trademark, considering that the products of that particular company are not well advertised and the products are not recognised (it does not say by the Dominican consumer). Te court concluded that if the products are not recognised, the trademark cannot be either.
Te ‘circle design’ originally filed is part of the branding for popular consumer goods sold globally by the applicant. Te circle is an important element of the label and trademark of the product. Te court and the ONAPI took into account that it is very different from hundreds of circle design registrations around the globe. Tis ‘circle design’ has a tradition of more than a century of use and is protected in many countries outside the Dominican Republic.
It seems that the question will now be decided by the Supreme Court of Justice in the Dominican Republic. Te Supreme Court decides only if the law has been well or wrongfully applied, and will have to examine if the distinctiveness requisite in the law has been observed in the previous judicial decision. International recognition of valid trademarks of the same design should not be overlooked.
Jaime R. Angeles is a partner at Angeles & Lugo Lovatón. He can be contacted at
jangeles@angeleslugo.com
www.worldipreview.com World Intellectual Property Review September/October 2013 167
“THE COURT DECIDED AGAINST THE APPLICANT FOR THE TRADEMARK, CONSIDERING THAT THE PRODUCTS OF THAT PARTICULAR COMPANY ARE NOT WELL ADVERTISED AND THE PRODUCTS ARE NOT RECOGNISED.”
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