Strengthening border measures
Under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, members have an obligation to provide for the necessary internal procedures that would help in the prevention of counterfeiting. Under the Dominican Republic Free Trade Agreement (DR-CAFTA), members have a similar obligation. The customs authorities of the Dominican Republic, in an attempt to comply with these international obligations, have created a registry for the owners of IP rights.
As indicated in TRIPS, all members shall “adopt procedures to enable a right holder, who has valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods may take place, to lodge an application in writing with competent authorities, administrative or judicial, for the suspension by the customs authorities of the release into free circulation of such goods.
Members may enable such an application to be made in respect of goods which involve other infringements of IP rights, provided that the requirements of this Section are met. Members may also provide for corresponding procedures concerning the suspension by the customs authorities of the release of infringing goods destined for exportation from their territories”.
Chapter 15 of DR-CAFTA lays down special requirements related to border measures. If the customs authorities suspect that goods are counterfeits, the DR-CAFTA allows them to tell the owner of the IP right (i) the name and address of the consignor, (ii) the importer and the consignee, and (iii) the quantity of goods concerned. Moreover, it allows the competent authorities to initiate border measures with respect to suspected goods, without requiring formal application by the rights holder.
“THE DGA MAY ACT ON ITS OWN BEHALF WHEN IT HAS REASONABLE GROUNDS TO CONSIDER THAT MERCHANDISE IMPORTED, EXPORTED OR IN TRANSIT IS CONSIDERED SUSPICIOUS.”
These measures, established by DR-CAFTA, were subsequently supported by the implementation of DR-CAFTA Law No. 424-06, which incorporated in Article 174 of our Industrial Property Law 20-00 the possibility for a holder to request the customs authorities of Dominican Republic (DGA) to suspend the clearance of allegedly counterfeit or confusingly similar goods, as long as evidence of the presumed infringement is presented.
Moreover, the DGA may act on its own behalf when it has reasonable grounds to consider that merchandise imported, exported or in transit is considered suspicious, and therefore proceed with the retention of such merchandise.
IP rights registry
As per the provisions contained in the DR-CAFTA, on August 4, 2010, the DGA issued Resolution No. 01-2010, aimed at providing support to the work of inspection and/or retention in customs of goods affected with a presumption of violation of IP rights, through the creation of a registry of IP rights holders before said institution. This resolution was subsequently amended by Resolution No. 02-2010 dated September 30, 2010.
This new registry is available for all owners of trademarks and copyrights protected by national laws, treaties and international agreements subscribed to and ratified by the Dominican Republic. Any owner that applies for the registration of its acquired rights before the DGA, as per Resolution No. 01-2010, must comply with the following requirements:
