Making the case: IP developments in the Dominican Republic
Advertiser liability online
People with an interest in IP who follow the particular issue of who is liable on the Internet (and why), might find strange the decision of civil courts in the Dominican Republic about online liability.
On a website about the Dominican Carnival (www.carnival.com.do), a telephone company (Claro, formerly Codetel) and the National Hotels & Tourism Association (Asonahores) are advertisers. A small image of each company’s logo is displayed on the site’s home page.
The website was created under the orders of the Minister of Tourism of the Dominican Republic. The creator/editor of the website uploaded a song by a Dominican author. The author started a copyright claim in the courts.
Decisions in the first instance and court of appeals considered that the advertisers were liable for damages (of around $37,500). None of the advertisers had any influence in the selection of the illegal uploaded song and neither had they authority to remove it. The case is pending now in the Dominican Supreme Court of Justice.
Unfair competition in advertising
Two major food companies that compete in the chicken broth cubes sector are involved in the first false and deceptive advertising and unfair competition litigation in the Dominican Republic. Decisions until now have denied the existence of unfair competition. The case is pending in the Dominican Supreme Court of Justice.
Unfair competition with trademarks
After a claim of unfair competition and illegal use of trademarks, presented by a famous beach resort in Punta Cana/Bávaro, authorities started a legal process against a website that operated a prostitution business in the Dominican Republic. The decision is pending.
Just trademarks
A landmark decision issued by the Santo Domingo Court of Appeals in March 2012 found for the first time that a trademark which is a foreign language word is descriptive. Specifically, the court held that the mark ‘Wides’, although an English, not a Spanish, word, was recognised by the average Dominican consumer as descriptive of wider, broader cigarettes influencing the taste of the product.
In January 2013, there was a landmark decision of court of appeals finding that in the Dominican Republic (a Spanish-speaking country) the term ‘app store’ is a generic.
“A LANDMARK DECISION ISSUED BY THE SANTO DOMINGO COURT OF APPEALS FOUND FOR THE FIRST TIME THAT A TRADEMARK WHICH IS A FOREIGN LANGUAGE WORD IS DESCRIPTIVE.”
The court based its decision on the trademark definition contained in the Dominican IP Law and rejected Apple’s arguments, confirming, as indicated in the local patent office resolution, that as per Article 73(c), a sign cannot be registered when it can serve to qualify or describe any characteristic of the goods or services (to be protected) or when the sign lacks sufficient distinctiveness.
According to the court decision, ‘app store’ has been used in the field of information technology, especially in the field of the Internet and users of services of applications for different utilities in smart appliances such as mobile phones and laptops, among others. ‘App store’ is used generically by such users, hence the plaintiff had asserted a wrongful claim.
Better IP management?
The World IP Organization selected the Dominican Republic (the only country from Latin American and the Caribbean) to help in the formulation of a national IP strategy, together with five other countries from Africa, Asia and Central Europe. The main objective would be to improve institutional capacity and better and efficient use of IP.
For this process, the authorities identified several private sectors that depend on heavy use of IP: health, cultural industries, agriculture, software, R&D and others. The strategy includes IP education in schools, training for small and medium-sized technological businesses and better processes for IP enforcement. The Dominican National strategy will cover the next 10 years.
