In the Dominican Republic, the exclusive rights to a trademark are granted only by registration, as it is a “first-to-file” jurisdiction. However, in exceptional cases, well-known trademark can be protected even if they have not been filed yet.
The trademark applications must be filed with the National Office of Industrial Property of the Dominican Republic (ONAPI).
In the Dominican Republic, the trademark does not have to be in use at the moment of registration. However, prior use of the trademark may be useful in overcoming objections raised on the grounds of lack of distinctiveness by proving acquired distinctiveness.
If you register a combined trademark (which includes both word elements and figurative elements) in the Dominican Republic, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
It is possible to file opposition actions against a trademark application in the Dominican Republic during a period of 45 days after its publication in the Official Bulletin.
If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in the Dominican Republic (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.
As stated above, it is not necessary for a trademark to be in use for it to register. However, once registered, it must not remain unused for periods of three consecutive years, or it will become vulnerable to cancellation actions filed by third parties. The amount of use must be on a commercial scale to be acceptable.
In the Dominican Republic registered trademarks have a validity of ten years counting from the registration date. They can be renewed every ten years. The renewal request, which must include a declaration of use of the trademark, can be filed during the six (6) months preceding the expiration date, or during the six months following it. Late renewal will incur additional costs.