Registration of non-traditional trademarks in the Dominican Republic

With the implementation of the Dominican Republic-Central America Free Trade Agreement (DR-CAFTA) came a series of amendments in November 2006 to Industrial Property Law 20-00, including Article 72, which now includes non-traditional marks within the definition of signs that may be registered as trademarks.

Among the list of signs defined by Article 72 we find: words, fantasy designations, names, pseudonyms, commercial slogans, letters, numbers, monograms, figures, portraits, labels, shields, patterns, emblems, borders, lines and bands, combinations and arrangement of colours, three-dimensional shapes, sounds and scents.

According to Article 72, nontraditional trademarks may be registered in the Dominican Republic, as long as they comply with the graphic representation requirement established by Article 70 of the law, as a constituent element of the definition of trademark.

Below is a brief description of some non-traditional trademarks and their registration requirements in the Dominican Republic.

Colour

Article 72 clearly states that combinations and arrangement of colours may be registered as trademarks.

However, a simple colour in and by itself may not be registered as a trademark, unless it may be verified that, due to its ongoing use in the country, said symbol has acquired a sufficiently distinctive character within the business community and the public at large as a mark, in connection with the products or services to which it is applied, as established in numeral 2 of Article 73 of Industrial Property Law 20-00.

Shape

Listed in Article 72 are “three-dimensional shapes”, which may be a representation of the product itself, the container for the product or the architectural design of a place of business or a signpost. The graphic representation requirement must be met in order for the shape to be eligible for registration as a trademark.

Sound

Sound marks are those that identify and distinguish products or services through musical notes, jingles or any other type of sound. The graphic representation of sound marks may be done through an oscillogram, sound spectrum, spectrogram or sonogram. These graphic representations are usually accepted by trademark offices.

In the Dominican Republic, a sound mark may be registered as long as the application for it includes a “representation in or description of any medium known or to be developed of the mark”, according to Article 75 of Law 20-00.

Scent

Scent marks are those that identify and distinguish products or services through particular scents and they may be registered as long as the scent has nothing to do with the purpose of the product or service that it identifies. In order to be registered as trademarks, scents must be clearly distinguishable, precise, complete, easily accessible, lasting and objective.

"It is difficult to determine whether a written description of scent is able to fulfil this requirement, as the description might not be considered sufficiently clear, precise or objective."

The difficulty in registering scent marks lies in the graphic representation of the same. Article 75 of Law 20-00 establishes as a requirement for the registration of scent marks the same requirement as that for a sound mark, ie, a “representation in or description of any medium known or to be developed of the mark”. However, it is difficult to determine whether a written description of scent is able to fulfil this requirement, as the description might not be considered sufficiently clear, precise or objective.

Taste

Taste trademarks consist in the flavour of a particular product. Its graphic representation requirement may be fulfilled with a written description of the flavour. However, Law 20-00 does not specifically mention taste as a sign that may be registered as trademark, as it does mention threedimensional shapes, sounds and scents in Article 72. It is yet to be seen whether the National Office for Industrial Property (ONAPI) will accept a taste trademark for registration.

Motion

This type of non-traditional trademark consists in moving images as in the form of a movie, video, animation or logo. It may combine colours, sounds and aspects of certain product designs. As with the taste trademark, Dominican legislation on Industrial Property does not specifically contemplate motion trademarks within the list of signs mentioned in Article 72 of Law 20-00 that may be registered as trademarks.