Trademark law treaty now a reality

The Trademark Law Treaty (TLT) adopted on October 27, 1994, at a World Intellectual Property Organization (WIPO) conference in Geneva, was recently ratified by the Dominican Republic as a complement to the Dominican Republic-Central America Free Trade Agreement (DR-CAFTA). The treaty was ratified on September 13, 2011 and entered into full effect on December 13, 2011.

In doing so, the Dominican Republic has joined 49 other countries that, as signatories to the TLT, have modified their legal systems in order to simplify the requirements and registration procedures for trademarks. The purpose of the treaty is to streamline and harmonise the administrative procedures for national applications and the protection of trademarks.

The treaty does not deal with the substantive parts of trademark law concerning the registration of marks but, rather, simplifies national and regional trademark registration procedures while, at the same time, eliminating formal requirements that are considered to be unnecessary obstacles in the registration process.

“A DECLARATION AND EVIDENCE OF USE OF THE MARK MAY NOT BE REQUIRED UNLESS ONAPI HAS REASONABLE DOUBTS OVER THE VERACITY OF ANY INDICATION OR ELEMENT CONTAINED IN THE RENEWAL REQUEST.”

The TLT applies to trademarks for goods and services, including word marks, design marks, mixed marks and three-dimensional marks. The treaty does not apply to sound marks, olfactory marks, collective marks, certification marks or guarantee marks. The provisions of the treaty deal with the three phases of the registration procedure: (i) the application for registration; (ii) changes after registration; and (iii) renewal. In the paragraphs that follow we explain the changes that have taken place in the Dominican legislation with the implementation of the provisions of the treaty.

(i) Application for registration

The TLT establishes in Article 3 an exhaustive list of information that may be required by the National Trademark Office regarding the application for the registration of a trademark. The office may not require any information other than that specifically listed in the treaty. In this respect, there are only slight changes introduced, given that the Dominican Republic Industrial Property Law No. 20-00 already contained very similar requirements. Changes that have been introduced include: