Mejía-Armenteros & Abreu

by Santiago Mejía Ortiz, Partner

s.mejia@maa-law.com

I. Overview

Law 20-00 of May 8th, 2000 on Industrial Property unified its Industrial and Intellectual Property legislation, providing a modern and efficient legal framework, in compliance with and according to the TRIPS and other international agreements.

The government agency in charge of administering the industrial property law (and copyright law as well) is the Oficina Nacional de Propiedad Industrial or “ONAPI” (National Office of Industrial Property), adhered to the Secretary of Industry and Commerce.

The application regulations of Law 20-00 are found in the Presidential Decree 599-01.

II. Trade Names

Law 20-00 protects distinctive signs such as: trade names, labels, emblems, slogans, appellations of origin, etc.

The exclusive right to use a trade name arises from its first commercial use, not from registration; nevertheless for slogans the registration is necessary to gain exclusive rights. Protection is granted in the absence of registration and ends with the abandonment of the name, meaning not using it for more than five years.

Generally speaking, Trade names cannot be registered, among other reasons, if:

·         It is formed of indications or signs that go against public order or moral,

·         It may create confusion among the public in regard of the nature, activities or any other aspect with the holder or to its products or services.

·         It may create confusion with other registered or used names

III. Trademarks

Law 20-00 protects all types of trademarks, including collective marks and certification marks.

Registration grants the exclusive right of use over a trademark. Priority rights for trademarks registered on other jurisdictions are also recognized.

Here are a few of the main prohibitions for registering a name:

·         Signs that may be used in commerce to describe the product,

·         Generic or scientific denominations of the product, colors, etc.,

·         Signs contrary to public order or moral,

·         Signs that may deceive the public as to the nature or qualities of the product, etc.

·         Signs similar to registered (or already in-use) trademarks for similar or related products, or similar to registered labels, commercial names or emblems,

·         Signs copying, imitating or translating notorious signs, that may lead to confusion,

IV. Patents

Patents may be obtained to protect inventions, utility models and industrial designs.

Some of the matters that are not patentable include:

·         Discoveries already existing in nature, scientific theories and mathematic methods,

·         Solely aesthetic creations,

·         Presentations of information,

·         Computer programs,

·         Therapeutic, chirurgical or diagnostic methods for human or animal treatment,

·         Living matter and substances already existing in nature

·         Inventions whose exploitation goes against public order or moral, or which may be clearly prejudicial to health, human life or the environment

Generally speaking, Inventions must be: of practical industrial use and novel

V. An overview of the requirements

Requirements, deadlines, tariffs and procedures for the registry of industrial property rights in the DR vary depending if it is a trademark, a patent or a tradename.

Some of requisites for registering a tradename include:

·         Complete full name of the applicant and the representative, if it will have it.

·         Permanent address of the applicant and the representative, if it will have it. 

·         Telephone number, mobile and fax of the applicant and the representative, if it will have it. 

·         Electronic mail (if they have it). 

·         Denomination of the commercial name. 

·         Activity or activities to which the name is to be used. 

·         If it is an emblem, a brief description of the design of the emblem and annex five (5) reproductions of it.

·         Copy of the identity card, the passport (if foreign) or of the RNC (if it is a company) of the applicant and the representative, if it will have it. 

·         Power of Attorney of the representative, if applicable.

As for the trademarks, some of the requirements are:

·         Complete full name of the applicant and the representative, if it will have it.

·         Permanent address of the applicant and the representative, if it will have it. 

·         Telephone number, mobile and fax of the applicant and the representative, if it will have it. 

·         Electronic mail (if they have it). 

·         Denomination of the trademark, if a denominative. If it is a figurative, mixed or tridimensional trademark, a brief description is needed and to include 5 depictions of the trademark. 

·         List of products or services to be protected with the trademark

·         Specifications on the international class where the products or services are contained (Nice Agreement)

·         If it is a collective or certification trademark, 2 copies of the Use Regulation is to be annexed.

·         Copy of the identity card, the passport (if foreign) or of the RNC (if it is a company) of the applicant and the representative, if it will have it. 

·         Power of Attorney of the representative, if applicable.

To register a patent, the ONAPI have a form to be filled and among other things the following needs to be annexed:

• Description of the patent  
• A summary of the patent
• Any drawing or sequence list
• A certification of registry in other countries (if it is the case)
• Power of attorney

Any document not in Spanish will need a sworn translation to the Spanish language.

(This is just a few of the most common requirements, there are more specific requirements and they are subject to change from the competent authorities)

VI. General Outlines of available procedures

Observation Procedure (“Recurso de Observación”)

This procedure could be interposed by all persons interested in the 60 days to the date of the publication; this procedure will not suspend the transaction of the request of the registry. It consists of making some claim after the publication done by the O.N.A.P.I.

Opposition Procedure (“Recurso de Oposición”)

Is the procedure that an interested party interposes against the publication of request of registry in a period of 45 days after publication of the notice of registry request.

Reconsideration procedure (“Recurso de reconsideración”)

Is exerted against a resolution that rejects or annuls a registry, will have to be done in writing before the O.N.A.P.I. within 30 days after the notification of the resolution that rejects or annuls the registry.

Appeal Procedure (“Recurso de Apelación”)

It will be exerted when the Directors of Departments have dictated resolutions, and have to be made within 15 days from the notification of the resolution. The Director General jointly with the Counseling Board will know the procedure.

VII. Implementation of the DR-CAFTA and the Law 20-00.

By virtue of the implementation of the DR-CAFTA by the Dominican Republic, some modifications have been made to the Law 20-00. Mainly to widen the protection periods for patents, excluding a few “patentable” items and some new penalties for the violations of industrial property rights, among other changes that will be subject to an additional future overview.

VIII. IMPORTANT Disclaimer

This brief overview of the Industrial Property Law of the Dominican Republic is intended only to serve as a guide for those interested and does not constitute, by any means, a legal opinion on the matters covered herein. For the nature of the document, not all matters and/or scenarios are covered and those covered are done so in a brief way; therefore any specific requirements or questions will required specific legal counseling and should and could be directed to the author.