General trademark information of Dominican Republic

Registration is required to establish rights in a trademark; this is a "first-to-file" jurisdiction.

 Although this is a first-to-file jurisdiction, prior rights can be established by prior use for a duration of at least six continuous months before a third-party application date.

• Use of an unregistered mark for the following specified goods only is not legal:
  • pharmaceutical products;
  • toiletries;
  • tobacco products;
  • industrial chemical products;
  •  
    • food and drink products;
    • veterinary products.

• No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

• The benefits of registering a trademark include the following:
  • it provides prima facie evidence of ownership and validity;
  • it provides regional, national, and/or local protection;
  • it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark;
  • it allows the registrant access to bring actions in particular courts

• it helps to deter others from unlawfully using the trademark;
• it provides a defense to infringement;
• enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark

• it encourages licensees and provides the opportunity to generate royalties through licensing.

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
  • words;
  • names;
  • devices;
  • certain three-dimensional shapes;
  • colors;
  • slogans;
  • sounds;
  • smells (olfactory trademarks);
  • trade dress/get-up;
  • holograms.

• The special requirements for the registration of three-dimensional shapes are:
  1. Two graphic samples of the trademark of dimensions no larger than 15 cm x 15 cm;
  2. Colors claim, if applicable.

• The special requirements for the registration of colors are:

• The special requirements for the registration of sounds are:

• The special requirements for the registration of smells are:
1. Description of the smell;
2. Chemical formula of the smell;
3. Reduced sample of the smell.

• The special requirements for the registration of trade dress are:
  1. Two graphic samples of the trademark of dimensions no larger than 15 cm. x 15 cm;
  2. Colors claim, if applicable.

• The special requirements for the registration of holograms are:
1. Two graphic samples of the trademark of dimensions no larger than 15 cm. x 15 cm;
2. Colors claim, if applicable.

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • collective marks;
  • certification marks;
  • well-known marks

• service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
  • marks that function principally as geographic location names (but not geographical indications or appellations of origin);
  •  
    • merely descriptive terms, such as laudatory terms (unless in combination with a distinctive sign);
    • terms that infringe copyright;
    • terms that are applied for in bad faith, i.e., (a) as an obstacle to bar a competitor from entering a particular market; (b) it is a complete reproduction of a famous or well-known trademark; or (c) the applicant is a distributor who knowingly attempts to register the mark in his/her own name instead of in favor of the licensor. (A mark filed in bad faith will not necessarily be refused by the examiner; therefore, a party with a better-established right can interpose either an opposition or a cancellation action. When bad faith is proven, there is no statute of limitations to interpose a cancellation action.);
    • terms that are contrary to any existing local law.

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:
  • specific laws or decrees that recognize individual geographical indications.

• The following products or categories are subject to GI protection in this jurisdiction:

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights;
  • disclose additional potentially conflicting trademarks, e.g., prior unregistered rights such as those gained at common law.

• The national office is accessible online at the following URL:

• The official register can be searched online at the following URL:

• An applicant benefits from pre-filing use of a trademark.

• The benefits of pre-filing use are:
  • Use may demonstrate acquired distinctiveness (secondary meaning) and help to overcome an objection to an application to register the trademark on the ground of non-distinctiveness.

• When a mark is not registered, use of that mark may provide the following benefits:
  • Courts may protect unregistered trademarks in some exceptional cases.

• Special protection against infringement may be available for a famous and/or well-known mark that is not registered.

• Protection against infringement may be available for trademarks with substantial and long-standing use that are not registered.

• Famous and/or well-known marks are protected via the following mechanism(s):
  • an administrative process;
  • a determination by the court resulting from an action for infringement.

• This jurisdiction is a member of the following international treaties relating to intellectual property:
  • Paris Convention;
  • Trademark Law Treaty;
  • Nice Agreement;
  • Vienna Agreement;
  • Lisbon Agreement

• If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

• Joint applicants are permitted in this jurisdiction.

• Neither actual use nor intent to use is required for application.

• The following information is required to COMPLETE an application:
  • name and address of applicant;
  • state or country of incorporation;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • power of attorney;
  • official filing fee;
  • priority claim, where priority of an earlier application is claimed.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • power of attorney

• priority claim, where priority of an earlier application is claimed.

• The list of goods and services in this jurisdiction may specify:
  • “all the goods” or “all the services” of the relevant class(es);
  • the relevant class heading;
  • a list of names commonly used in the trade for the specific goods or services of interest;
  • the relevant entire (long) alphabetical class listing.

• The relevant entire (long) alphabetical class listing is appropriate to use in applications for:
  • goods and/or services.

• The following number of copies of the trademark must be submitted:

• In this jurisdiction, the following types of registration are available:
  • national.

• This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

• No (other) multinational regional registrations are available in this jurisdiction.

• Applications can be filed online at the following URL:

• The official file cannot be accessed online.

• Applications are officially searched as to prior trademarks.

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

• This jurisdiction uses the Nice Classification System.

• If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.

• For a multi-class application, the applicant must pay class fees on a per-class basis.

• An application to register a trademark may be filed directly in this jurisdiction by:
  • the applicant, but only if a citizen of or domiciled in the jurisdiction;
  • a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:
  • through publication and online.

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • application number;
  • application date;
  • goods/services;
  • representation of trademark.

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
  • clarity: i.e., that descriptions are clear and understandable;
  • descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
  • distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
  • deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);
  • conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search;
  •  determining whether absolute grounds for objection exist.

• If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
  • The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

• The order of the application process is as follows:
  • examination, publication, registration.

• Accelerated examination may not be requested.

• The following rights are established by a pending application:
  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;
  • the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application;
  • the pending application establishes prima facie proof of ownership of a trademark.

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality.

• An application is published for opposition purposes after formal examination of the application.

• The opposition period begins on the following date:

• The opposition period ends on the following date:

• The following parties may initiate an opposition:
  • the owner of an earlier right,

•  anyone, for oppositions based on absolute grounds.

• Oppositions cannot be filed online.

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

• An application can be assigned.

• A registration can be assigned.

• An assignment of an application must be for the entire territory covered by the application.

• An assignment of a registration must be for the entire territory covered by the registration.

• An assignment of an application can be for some or all of the goods or services listed in the application.

• An assignment of a registration can be for some or all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • effective date of the assignment;
  • signature by assignor.

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • effective date of the assignment;
  • signature by assignor.

• Legal verification of a written assignment document of an application is not required.

• Legal verification of a written assignment document of a registration is not required.

• An assignment of an application must be recorded to be effective

• An assignment of a registration must be recorded to be effective.

• Use of a mark that is the subject of an application can be licensed.

• Use of a registered mark can be licensed.

• In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

• A license of an application can be made for a portion of the territory covered by the application.

• A license of a registration can be made for a portion of the territory covered by the registration.

• A license of an application can be for some or all of the goods or services listed in the application.

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of an application can be exclusive (only one licensee, with the owner excluded).
• A license of an application can be sole (only one licensee and the owner).
• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be exclusive (only one licensee, with the owner excluded).
• A license of a registration can be sole (only one licensee and the owner).
• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a mark that is the subject of an application need not be licensed.

• Use by a related company of a registered mark need not be licensed.

• A license of an application can be made with a time limitation.

• A license of a registration can be made with or without a time limitation.

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • if the license has no limitation of time, a statement so indicating;
  • territory of the license;
  • signature by licensor;
  • express permission to sublicense, if appropriate.

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • if the license has no limitation of time, a statement so indicating;
  • territory of the license;
  • simple signature by licensor (see below for execution requirements).

• Legal verification of a written agreement to license an application is required by:
  • notarization

• legalization

• A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is required by:
  • notarization

• legalization

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • power of attorney, without further formalities;
  • deed of assignment, without further formalities;
  • certificate of proof of change of name, without further formalities;
  • certificate of merger, without further formalities.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

• The requirements for recording liens against trademark records, such as security interests, are as follows:

• A fee is not required for issuance of the registration.

• The following documentation is required for issuance of the registration:
  • none.

• The following rights are established by registration:
  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications;
  • the right to bring a cancellation action against a subsequent conflicting registration;
  • the right to sue for infringement against confusingly similar third-party trademark use;
  • the right to license third parties to use the trademark;
  • the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
  • the right to obtain damages for infringement;
  • the right to sue for infringement if a transliterated version of the owner's mark is later used by a third party;
  • the right to oppose and/or cancel subsequent applications for transliterated versions of the registered trademark by third parties.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  • counting from the date of registration of the mark:

• The territorial limit of registration is:

• The initial term of a registration is:
  • 10 years.

• The beginning of the term of a registration is calculated from:
  • the registration date.

• Marking is not compulsory for registered trademarks, but is advisable because:

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  • ®.

• The use of ® is not legally recognized, but it is recognized in practice.

• The legal consequences of false or misleading marking are:

• Attack on the ground of non-use is available.

• To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

• To satisfy the use requirement, the amount of use:
  • must be on a commercial scale.

• Use of the trademark must occur in:
  • this jurisdiction.

• The consequences of a trademark's not being used are as follows:

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:
  •  anyone.

• Non-use can be excused under the following circumstances:
  • import restrictions;
  • other government policies;
  •  circumstances beyond the control of the title holder.

• Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:
  • filed an application to register an identical or similar trademark;
  • registered an identical or similar trademark;
  • used an identical or similar trademark;
  • filed an action for cancellation of the trademark on the ground of non-use.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

• Cancellation is available.

• The following can be grounds for cancellation:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality;
  • the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

• the mark includes a badge or emblem of particular public interest;
• the mark is used in a misleading manner;
• the mark is prohibited in this jurisdiction;
• the application for or registration of the mark was made in bad faith.

• There is a deadline for bringing a cancellation action.

• The deadline for bringing a cancellation action is:

• The following parties may bring a cancellation action:
  • any interested party

•  For cancellations based on absolute grounds or based on non-use of the registered mark, anyone may bring a cancellation action.

• Cancellation actions cannot be filed online.

• The following documentation is required for renewal:
  • none.

• The first renewal date of a registration is:
  • 10 years from the registration grant date.

• Subsequent renewals last for the following period of time:
  • 10 years from the renewal date of the registration.

• The renewal pre-payment period is:
  • no more than the following number of months before the renewal date:

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:
  • 6 months.

• The penalty for late renewal is:
  • a fine.

• Renewal can be effected online at the following URL:

• At the completion of renewal, a new registration number is not issued.

• Trademarks that are registered in this jurisdiction can be recorded with the customs authority, the name of which is:

• Recordation with the customs authority cannot be accomplished online. The following process must be followed:

• A domain name may be protected as a trademark only if the domain name is not merely a Web address but is used or intended to be used in connection with goods or services.

• The following approved registrars can register a domain name in this jurisdiction:

• Availability of domain names in this jurisdiction can be searched through the following website(s):

• The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

• To obtain a domain name under the ccTLD in this jurisdiction, there are no requirements of locus with this jurisdiction, such as a local address or local business activity.

• Domain name registrations can be assigned.

• Domain name registrations can be licensed.

• A domain name registration may be contested in this jurisdiction through the following mechanisms:
  • a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through an ICANN-approved domain-name dispute resolution service provider (see http://www.icann.org/en/help/dndr/udrp).

• One may institute a UDRP proceeding with the following ICANN-approved domain-name dispute resolution service providers to contest a domain name registration in this jurisdiction:
  • World Intellectual Property Organization (WIPO);
  • National Arbitration Forum.

• Once a registration lapses as a result of failure to renew, it cannot be revived or restored.

• The application to register a domain name as a trademark will be examined for conflicts with prior trademarks.

• An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another only if the domain name is being used as a trademark in addition to being used as an address.

• In general, the courts apply the same principles to domain name disputes as are applied to trademark disputes.

• Opposition is available.

• Opposition is conducted pre-grant.

• Opposition is available for either all or part of the goods/services covered by a trademark application. Opposition is not available for a trademark registration since it is not conducted post-grant.

• This jurisdiction has no current plans to become a member of the Madrid Agreement or the Madrid Protocol.

• Collective marks are registrable.

• Opposition to an application for a collective mark is available.

• Opposition to a registration for a collective mark is not available.

• Certification marks are registrable.

• Opposition to an application for a certification mark is available.

• Opposition to a registration for a certification mark is not available.

• An opposition (even if unsuccessful or later withdrawn) will delay the grant of full registration rights to the applicant.

• The following grounds are admissible for opposition:

• relative grounds (based on conflicting prior application(s)/registration(s) or based on conflicting prior rights in unregistered marks) (Article 74, letters (a) and (b) of the Industrial Property Law (Law No. 20-00) establishes that a symbol cannot be registered as a trademark when (a) it is identical to, or resembles, to the point that it could create confusion with, a trademark that is registered or in the process of registration by a third party as of a previous date, and that distinguishes the same products or services, or products or services that are different but might be associated or connected with those that the earlier trademark distinguishes; or (b) it is identical to, or resembles, to the point that it could create confusion with, a trademark that is not registered but is used by a third party who would have better rights to obtain the registration, so long as the trademark is for the same products or services, or for products or services that are different but might be associated or connected with those that the utilized trademark distinguishes. Additionally, Article 73, letter (q) of the Industrial Property Law establishes that a symbol cannot be registered as a trademark when (q) it is identical to, or resembles, in such way as might cause the public to err, a trademark registration that has expired and not been renewed, or that has been cancelled upon the request of its holder, and that is applied to those same products or services or other products or services that by their nature might be associated with those, unless one year has passed after the date of expiration or cancellation.);

• absolute grounds (based on grounds other than proprietary rights, e.g., not a proper trademark, non-distinctiveness, descriptiveness or deceptiveness) (According to Article 73, letters (a), (b), (c), (d), (e), (f), (i) and (j) of the Industrial Property Law, oppositions can be grounded on the following prohibitions: when a trademark consists of (a) usual or ordinary forms for products or their containers, or forms that are necessary or imposed by the very nature of the product or service in question; (b) forms that give a functional or technical advantage to the product or service to which they are applied; (c) a symbol or an indication that can be used in business to qualify or describe some characteristic of the products or services in question; (d) a symbol or an indication that, in ordinary language or in the business usage of this country, is a generic designation, common or usual for the products or services in question, or is the scientific or technical name of a product or service, so as to differentiate them from the same analogous or similar products or services; (e) a simple color considered in isolation; (f) a mark not having sufficient distinctive character with regard to the products or services to which the mark is applied, to differentiate them from analogous or similar products or services; (i) a mark that may deceive commercial media or the public as to the source, nature, method of manufacture, qualities, aptness for use or consumption, quantity or any other characteristic of the products or services in question; (j) a reproduction or imitation of an appellation of origin registered pursuant to this law for the same products, or different products, if there is a risk of confusion about origin or other characteristics of the products or a risk of taking unfair advantage of the prestige of the appellation of origin, or it consists of a geographical indication that is not sufficiently arbitrary and distinctive with regard to the products or services to which it is applied and whose use is likely to create confusion with respect to the origin, point of departure, qualities or characteristics of the products or services for which the trademark is used.);

• bad faith issues (e.g., wrongful claim to ownership or lack of intention to use) (Article 74, letter (g) of the Industrial Property Law prohibits the registration of a trademark that is requested for the purpose of perpetrating or consolidating acts of unfair competition that involve bad faith. Additionally, pursuant to Article 92, a titleholder may file an annulment action at any time when the contested registration has been made in bad faith.);

• conflicting copyright or design rights (Oppositions can be based on conflicting copyright or design rights. Article 74, letter (g) of the Industrial Property Law prohibits the registration of a trademark when it could infringe copyright or a preexisting industrial property right.);

• rights under Article 6bis of the Paris Convention or the equivalent thereto (notorious or well-known marks) (Oppositions can be based on complete or partial reproduction, imitation, translation or transcription of a distinctive symbol that is widely known in the country by the relevant public sector in spite of the products or services to which the symbol is applied, when its use might cause confusion, a risk of association, taking unfair advantage of the notoriety of the symbol, or the dilution of the distinctive power of its commercial or publicity value (Article 74, letter (d) of the Industrial Property Law).);

• rights under Article 6septies of the Paris Convention or the equivalent thereto (registration in the name of an agent or other representative of the proprietor of the mark) (In accordance with Article 171 of the Industrial Property Law, when an application is filed by a person who does not have the right to obtain the trademark registration, the affected person shall be able to bring an action for recovery of his or her right before the National Office of Industrial Property (Oficina Nacional de la Propiedad Industrial (ONAPI)), so that the application being processed or the title or registration granted may be transferred to him or her, or so that he or she be recognized as the applicant or holder of the right.);

• rights in a locally registered company name (Oppositions can be based on previous rights of a locally registered company name. Article 74, letter (c) of the Industrial Property Law prohibits the registration of a sign that is identical to or resembles a commercial name, a sign or an emblem used or registered in this country by a third party as of an earlier date, so long as confusion may be caused, given the circumstances of the case.);

• rights in a foreign registered company name (When said company name is widely known in the country, oppositions can be filed based on Article 74, letter (d) of the Industrial Property Law, regarding well-known trademarks. In addition, the opposition can also be grounded on Article 8 of the Paris Convention, which states that a trade name shall be protected in all the countries of the Paris Union without the obligation of filing or registration, whether or not it forms part of a trademark.);

• rights under Article 6ter of the Paris Convention or the equivalent thereto (prohibitions concerning state emblems, official hallmarks, and emblems of intergovernmental organizations) (According to Article 73, letters (k) through (m) of the Industrial Property Law, oppositions can be based on reproduction or imitation of flags, emblems, rubrics or denominations of any State or any international organization. In addition, the law prohibits reproduction or imitation of official symbols for control or guarantee adopted by a State or a public entity without the authorization of the competent authority of that State, as well as coins or bills of legal tender in the territory of any country, titles, securities or other commercial documents, fiscal seals, stamps, letterheads, etc.);

• offenses against public policy or principles of morality;

• Article 73, letters (h), (n), (o) and (p) of the Industrial Property Law prohibits the registration of trademarks that consist of (h) symbols, words or expressions that ridicule or tend to ridicule persons, ideas, religions or national symbols, of other countries or of international entities; (n) a reproduction or inclusion of medals, prizes, diplomas or other elements that give the idea of the obtaining of prizes with respect to the products in question, except for such prizes as really have been given to the applicant for their registration or his or her assignee and this is confirmed at the time of applying for the registration; (o) a denomination of a variety of vegetation protected in the country or in another country, if the symbol is destined for products or services relating to that variety or its use is likely to cause confusion or association with that variety; (p) any mark that is contrary to any provision of the Industrial Property Law or another law.

• In an opposition involving conflicting trademark registrations or applications, an earlier use date prevails over a later filing date (i.e., this is a first-to-use jurisdiction). According to Article 71 of the Industrial Property Law, the right to exclusive use of a trademark is acquired by means of its registration. Nonetheless, paragraph (2) of said article states that the person who has been using the trademark in this country without interruption and in good faith from the earliest date shall have preference for obtaining the registration of a trademark. For these purposes, use for less than six months shall not be taken into account. If a trademark has not been in use in this country, the first person to have filed the corresponding application shall have preference.

• Circumstances under which earlier use is considered sufficient to prevail over a later filing date are: Pursuant to Article 71, paragraph (2) of the Industrial Property Law, a person who has been using the trademark in this country without interruption and in good faith from the earliest date shall have preference for obtaining the registration of a trademark (use for less than six months shall not be taken into account).

• The opposition authority is part of the Trademarks Registry/Office.

• The government/official fees for filing an opposition based on a single prior registration are: approximately USD 61.50.

• The approximate range of attorney fees for filing an opposition based on a single prior registration is: approximately USD 2,000.

• A listing of government/official fees for oppositions is not available online.

• There are no provisions requiring monetary bonds or other surety from a foreign opponent.

• The burden of proof is neutral; i.e., both parties must prove any grounds, facts, allegations and defenses on which they rely in the opposition.
  
  Pursuant to Article 1315 of the Civil Code, he who claims the execution of an obligation must prove it. Reciprocally, he who claims to be free from an obligation must justify settlement or the fact that has extinguished his obligation.   
  
  This general principle of law is applied to cases of this nature, in which the opponent must prove that the application in question contravenes Article 73 or 74 of the Industrial Property Law and the applicant must prove otherwise.

• The trademark registration process includes an official, substantive examination.

• This system includes an official, substantive examination of an application on:

• both absolute and relative grounds.

• The official, substantive examination of an application is conducted before publication for opposition.

• Examination of an application on relative grounds includes an official search for conflicting prior applications and registrations, and the examiner has the right of objection and refusal based on cited marks. Pursuant to Article 79 of the Industrial Property Law, ONAPI shall examine whether the trademark incurs some of the prohibitions set forth in Article 73 and Article 74, letter (a).
  
  If the trademark should be included in some of the prohibitions referred to, ONAPI shall notify the applicant, indicating the objections preventing its registration and giving him a period of 60 days to withdraw, modify or limit his application or to respond to the objections made, as the case may be.

• Any official, substantive examination report is open to public inspection before the end of the official opposition term. Article 161, paragraph (1) of the Industrial Property Law states that any person may access files related to applications for registration once they have been published.

• Opposition is not considered as part of the official, substantive examination and is decided in a separate proceeding.

• An official, substantive examination will not be conducted after an opposition proceeding has been concluded or after an opposition has been withdrawn.

• Standing to oppose extends to:

• any interested person, or a legally interested person, depending on the grounds.
  
  (a) Relative grounds – legally interested person     
  
  When a person files an opposition action based on the grounds of Article 74 of the Industrial Property Law, based on third-party rights (relative grounds), said person must be a “legally interested party”--for example, when the published trademark (i) resembles or is identical to a trademark previously registered or in the registration process; (ii) resembles or is identical to a trademark used by a third party who would have better right to obtain the registration; (iii) resembles or is identical to a commercial name, sign or an emblem used or registered in the country by a third party as of an earlier date; (iv) resembles or is identical to a distinctive symbol widely known in the country; (v) would affect the personal rights of a third party; (vi) would affect the right to the name, image or prestige of a corporation or a local, regional or national entity; or (vii) would infringe on copyright or an industrial property preexisting right or has been applied for so as to perpetrate or consolidate acts of unfair competition.  
  
  (b) Absolute grounds – any person  
  
  “Any third party” can also file an opposition action based on the grounds of Article 73 of the Industrial Property Law, based on absolute grounds for reasons intrinsic to the symbol. In this scenario, the applicant does not necessarily need to be a legally interested party. This is the case with a symbol that is contrary to morality or public order, as well as when a symbol reproduces or imitates a coat of arms, flags and other emblems, rubrics, denominations or abbreviations of denominations of any State or any international organization, coins or bills of legal tender, stamps, medals, prizes, diplomas, official symbols for control or guarantee adopted by a State.

• For purposes of standing, "person" is defined as:

• both natural and juridical persons.

• For purposes of standing, "interested person" is defined as:
  • someone who believes he will be damaged by the registration;
  • someone who owns an earlier pending application to register a conflicting trademark;
  • someone who owns an earlier conflicting trademark registration;
  • someone who owns earlier rights in a copyright or design that conflicts with the mark that is the subject of the trademark application;
  • someone who owns rights in a conflicting trademark that were acquired through use;
  • someone who owns a company name that conflicts with the mark that is the subject of the trademark application;
  • someone who is of the opinion that the mark is not registrable;

• Where opposition is based on relative grounds (i.e., a prior registered or unregistered right), then:

• the owner or a licensee of the prior right can use that right as a ground of opposition.

• Relevant prior rights must be locally established rights (e.g., local national registration rights, applicable regional rights or relevant International Registration extensions, or local rights in unregistered marks). Relevant prior rights need not be locally established rights in exceptional cases, such as with well-known trademarks.

• An unregistered assignee of a relevant prior right may not be a valid opponent. To be a valid opponent, an assignee must register the assignment at ONAPI. Assignments shall have legal force with respect to third parties only after being recorded at ONAPI, pursuant to Article 89, paragraph (3) of the Industrial Property Law.

• A registered licensee of a relevant prior right may be a valid opponent. The licensee must have the titleholder's consent.

• An unregistered licensee of a relevant prior right may be a valid opponent if the licensee has the titleholder´s consent.

• An opposition filed in the name of the legal representative for purposes of concealing the identity of the principal is not considered validly filed even if the opponent meets all the other criteria.

• Two or more opponents may jointly file a single opposition.

• A parent company and its trading subsidiary may be indicated together as opponents in a single joint opposition.

• Two otherwise-unrelated companies may file a single joint opposition.

• Oppositions cannot be filed from abroad; they must be filed by a local agent/attorney.

• If an opponent relies on a prior registration, the applicant or the opposition authority:

• cannot require the opponent to provide proof of use of the earlier-registered mark.

• The system provides a fixed initial term within which an opposition may be filed. According to Article 80, paragraph (2) of the Industrial Property Law, oppositions must be filed within 45 days counted from the publication of the application.

• For national applications, the initial opposition term begins:

• on the date that the details of the application are published for opposition in the local official IP bulletin, journal or gazette. This publication is called: the Official IP Bulletin and is published every 15 days in a newspaper of national circulation pursuant to Article 80, paragraph (1) of the Industrial Property Law.

• For national applications, the initial opposition term expires the following number of days or months after the date on which the opposition term begins (as mentioned above): According to Article 80, paragraph (2) of the Industrial Property Law, the initial opposition term expires 45 days from the publication of the application. For example, if publication is on September 30, 2020, the opposition term will expire on November 13, 2020.

• An opposition deadline that does not fall on a normal business day or that falls on a local public holiday or other officially excluded days may be met by action on the next business day.

• Normal business days of the week are:

• Monday through Friday.

• The opposition term is not extendable.

• The minimum filing requirements to initiate an opposition (i.e., to obtain a filing date) are:

• opposition form indicating the following information: details of the trademark being opposed, i.e., trademark, international classes, applicant information, application date and application number, as well as the legal grounds for opposition.

• official fee.

• The following additional actions or documentation are required to complete the required filing formalities (i.e., to shift the burden of action to the registration applicant) and will be accepted after the opposition deadline has expired:

• power of attorney (The power of attorney does not need to be legalized as per the terms of the Trademark Law Treaty (TLT). The power of attorney can be submitted past the opposition deadline. The TLT and its Regulations establish that when a communication is submitted to the Office, if upon receipt of said communication the Office does not have in its possession the necessary power of attorney, the time limit shall be counted from the date of receipt of the communication and shall not be less than one month when the address of the person on whose behalf the communication is made is in the territory, and not less than two months where such address is outside the territory of that Contracting Party.);

• evidence, as follows: evidence of the claims made in the opposition brief (i.e., proof that the trademark is well known, publications featuring the trademark, magazine articles, surveys conducted, advertisements, among others). There is no deadline to file evidence, but there is a time to present it. Past said time, there is no possibility of filing more evidence. The evidence should be provided while the debates are still open. However, it should be presented as soon as possible, whether it be near the filing date of the opposition or when the defense brief is notified, so that it can be submitted along with the rejoinder brief.

• Opposition fees can be paid using the following payment modes:

• credit card;

• checks;

• cash (Since opposition actions must be filed physically before ONAPI, cash is also accepted.).
  
   

• Documentation submitted in an opposition is open to public inspection once the opposition is concluded.

• The law does not specify whether requests can be made for documentation to be treated as confidential and not laid open to the public. Article 61 of Decree No. 599-01, establishing the implementing regulations for the Industrial Property Law, provides that industrial property rights are public and may be consulted in ONAPI. Article 161 of the Industrial Property Law states that these files can be consulted by third parties once they are published--in the present case, once the resolution deciding the opposition is published.
  
  Documentation that the parties involved may consider confidential may be requested to be returned after the case is judged, so long as the parties leave an inventory of these documents.

• Additional grounds of opposition may be introduced into an opposition after the opposition has been filed.

• The deadline for introducing additional grounds is: before the file is completed and ready for judgment.

• The opponent is required to act through a locally authorized representative during the entire proceeding.

• Opposition documents must be submitted in the following local official language(s): Spanish.

• Opposition documents may not be submitted in a language (or languages) other than the one(s) listed above.

• Depending on the jurisdiction, opposition proceedings generally involve a number of stages between the filing of the opposition and the official decision or judgment. Typically, the post-filing stages will require either that alternating actions be taken by one party after the other in consecutive steps or that actions be taken concurrently by both parties.

• In this jurisdiction, opposition proceedings require alternating action by one party after the other.

• A full discussion of the opposition stages is beyond the scope of this publication. Please consult a local attorney for specifics about the general sequence of stages from filing of the opposition until the official judgment or decision and the duration of and requirements for each.

• The approximate length of time from the filing of an oppostion to an official decision concluding the opposition procedure is: According to Article 154 of the Industrial Property Law, the length of time from the filing of an opposition to an official decision is about eight months. In practice, however, it may take up to two years.

• The opposition authority has no power to make formal monetary awards (costs, official or attorney fees, or other compensation) to the parties.

• Withdrawal of an opposition with or without the agreement of the applicant/registrant to the terms of the withdrawal automatically terminates the proceedings.

• Withdrawal of an opposition without the agreement of the applicant/registrant to the terms of the withdrawal does not have any consequences with regard to the award of costs.

• Withdrawal of an opposed application with or without the agreement of the opponent to the terms of the withdrawal automatically terminates the proceedings.

• Withdrawal of an opposed application without the agreement of the opponent to the terms of the withdrawal does not have any consequences with regard to the award of costs.

• Withdrawal of an opposition or of an opposed application outside this jurisdiction (with or without the agreement of the other party to the terms of the withdrawal) has no effect on opposition or other proceedings in this jurisdiction.

• If the opponent has withdrawn the opposition, the opposition authority cannot reject the opposed application on any of the opposition grounds.

• A formal basis is not required for withdrawal of an opposition. Nevertheless, such withdrawal must be communicated to the trademark authority in writing.

• The limitation or restriction of the applicant's goods/services, with or without a written settlement agreement, is commonly a basis for withdrawal of the opposition.

• The terms of a settlement agreement need not be disclosed to the opposition authority.

• The opposition authority need not approve any settlement reached and/or formal withdrawal of the opposition.

• An opposition decision may be appealed. Opposition resolutions issued by the Department of Distinctive Signs may be appealed before the General Director of ONAPI. Decisions rendered by the General Director may be appealed before the Administrative Court (“Tribunal Superior Administrativo”), but the decision of the General Director will be enforceable. The judgment rendered by the Administrative Court may be appealed before the Supreme Court of Justice.

• The following party or parties may file an appeal: any party who participated in the opposition process.

• The deadline for filing an appeal is: 30 days, not counting the day of proper and valid written notification and the day on which the term expires.

• There is more than one appeal authority, the names of which are: General Director of ONAPI; Administrative Court ("Tribunal Superior Administrativo").

• The following appeal authority/authorities is/are part of the Trademarks Registry/Office: General Director of ONAPI.

• The reasons for choosing one appeal authority over the other are: Nowadays, it is possible to present an appeal of the decisions issued by the Department of Distinctive Signs of ONAPI before the General Director of ONAPI or directly before the Administrative Court ("Tribunal Superior Administrativo") of the Dominican Republic. Generally, it is recommended that an appeal be filed with the General Director of ONAPI, since the possibility of a later appeal before the Administrative Court is not excluded and this offers greater opportunities for the decision to be modified or revoked.
  
  Note: Prior to the Constitutional Reform of 2010, it was mandatory to present the appeal before the General Director of ONAPI in order to accede to the Administrative Court. Currently, the exhaustion of this instance is due solely to strategic reasons.

• The government/official fees for filing an appeal are: approximately USD 69 for an administrative appeal before the General Director of ONAPI and USD 25 for an appeal before the Administrative Court.

• The approximate range of attorney fees for filing an appeal is: Hourly rates may range from USD 120 to USD 170.

• The government/official fees for prosecuting an appeal to conclusion are: approximately USD 120.

• The approximate range of attorney fees for prosecuting an appeal to conclusion is: Hourly rates may range from USD 120 to USD 170.

• Monetary bonds or other surety is not required of foreign appellants.

• An appeal decision is not final; higher appeals are possible and can be made to: Decisions rendered by the Department of Distinctive Signs of ONAPI can be appealed before the General Director of ONAPI. The decisions of the General Director may be appealed before the Administrative Court ("Tribunal Superior Administrativo"). Last, an annulment of the decision rendered by the Administrative Court can be sought before the Supreme Court of Justice.

• On higher appeal, there are no provisions requiring monetary bonds or other surety from a foreign appellant.

• Important circumstances of appeal that are not mentioned above include: None.

• In subsequent equivalent infringement proceedings, an opposition decision is not binding on the court but may be considered as persuasive authority.

• Particular local requirements that are not covered above and that are not common in other jurisdictions or familiar to foreign practitioners include: None.

• Important changes in relevant law are not anticipated in the near future.

• There are procedures available whereby third parties can apply to cancel or partially cancel a registration (whether or not an opposition has been filed).

• These procedures are known (or translate into English) as:

• cancellation (According to Article 93 of the Industrial Property Law, at the request of any interested person, ONAPI shall cancel the registration of a trademark when the same has not been used in this country for an uninterrupted period of three years preceding the date on which the cancellation action is initiated. The request for cancellation shall not be applicable before three years has passed counting from the date of the registration of the trademark. The registration shall not be cancelled when there are justifiable reasons for the lack of use.);

• nullity (According to Article 92 of the Industrial Property Law, at the request of any interested person, ONAPI shall declare the registration of the trademark null and void if it has been made in violation of any of the prohibitions set forth in Articles 73 and 74.
  
  A request for annulment based on a violation of Article 74 must be filed within five years after the date of the contested registration. The action for annulment shall have no time limit when the contested registration has been made in bad faith or when it was based on a violation of Article 73.);

• claims to the right to protective title (Pursuant to Article 171, paragraph (1) of the Industrial Property Law, when the registration of a distinctive symbol has been applied for or obtained by a person who does not have the right to obtain the registration, the affected person shall be able to bring an action for recovery of his or her right before ONAPI so that the application being processed or the title or registration granted may be transferred to him or her or so that he or she will be recognized as the applicant or holder of the right.).

• The grounds to initiate a cancellation are:

• the mark has not been used in this country for an uninterrupted period of three years preceding the date of filing of the cancellation action. The request for cancellation shall not be applicable before three years has passed counting from the date of the registration of the trademark. The registration shall not be cancelled when there are justifiable reasons for the non-use.

• The grounds to initiate a nullity are:

• the mark is descriptive;

• the mark is misleading and/or deceptive;

• the mark lacks distinctiveness;

• the mark is generic;

• the mark consists of a geographical indication;

• the mark is functional;

• the mark is against public policy or principles of morality;

• the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

• the mark includes a badge or emblem of particular public interest;

• the mark is used in a misleading and/or deceptive manner;

• the mark is prohibited in this jurisdiction;

• the application for or registration of the mark was made in bad faith;

• there is an earlier application or registered mark;

• there are earlier use-based rights in an unregistered mark;

• the mark is covered by a copyright;

• the mark is a company name;

• the mark is notorious or well known (Article 6bis of the Paris Convention);

• the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention);

• the mark is a trade or business name;

• the mark is a domain name.

• The grounds to initiate claims to the right to protective title are:

• the application for or registration of the mark was made in bad faith;

• there is an earlier application or registered mark;

• there are earlier use-based rights in an unregistered mark;

• the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention).

• To compare the grounds for the above procedures to the grounds for opposition, please see Section III. Grounds: A. Absolute, Relative and Other Grounds

• The burden of proof is on the registered proprietor to deny the grounds for cancellation.

• The burden of proof in an opposition differs from the burden of proof in a cancellation in that in an opposition:

• the burden of proof is on both parties.

• Cancellation or equivalent proceedings can in some circumstances be preferable to or pursued instead of opposition proceedings because:

• the opposition term has lapsed;

• cancellations and oppositions are proceedings under different circumstances, as noted above. Instead of cancellation, nullity is the equivalent proceeding provided by the legislation in the Dominican Republic. Nullity actions are available within the first five years of registration, while opposition proceedings are open only for 45 days after the trademark has been published and apply only to applications (not granted registrations). A nullity action, nonetheless, is a longer process.

• There are no procedures for official consideration of third-party objections to grant (e.g., observations, letters of protest, etc.).

• Cancellation of a trademark is available for:

• national marks;

• This jurisdiction is not a member of the Madrid System; we have no international marks.

• This jurisdiction is not a member of the European Union; we have no European Union Trade Marks.

• "Cancellation" is not defined by legislation.

• Cancellation actions cannot be filed online.

• The following absolute grounds may be raised in cancellation proceedings:

• the mark is descriptive;

• the mark is misleading and/or deceptive;

• the mark lacks distinctiveness;

• the mark is generic;

• the mark consists of a geographical indication;

• the mark is functional;

• the mark is against public policy or principles of morality;

• the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

• the mark includes a badge or emblem of particular public interest;

• the mark is used in a misleading and/or deceptive manner.

• The following relative grounds may be raised in cancellation proceedings:

• there is an earlier application or registered mark;

• there are earlier use-based rights in an unregistered mark;

• the application for or registration of the mark was made in bad faith;

• the mark is covered by a copyright;

• the mark is a company name;

• the mark is notorious or well known (Article 6bis of the Paris Convention);

• the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention).

• Other than the absolute or relative grounds listed above and/or the non-use grounds listed below, there are no other grounds that may be raised in cancellation proceedings.

• Non-use may be raised as a ground in cancellation proceedings (Article 93 of the Industrial Property Law (Law No. 20-00, May 8, 2000)). Note: The term "cancellation" can be used only when the ground cited is Article 93 (no use of the mark). For all other grounds cited above, the correct legal term is "annulment."

• In relation to cancellation for non-use, "use" is defined as: "It is understood that a mark is in use when the goods or services identified by the mark have been put in commerce or are available in the national market under that mark, in the quantity and manner that normally correspond, taking into account the market dimension, the goods themselves, the nature of the goods or services themselves and the manner under which commercialization occurs" (Article 94.1 of the Industrial Property Law). "Use is also constituted by the use of the mark in relation to goods destined to exportation from the national territory, or in relation to services offered abroad from the national territory" (Article 94.2 of the Industrial Property Law).

• The definition of "use" provided above is derived from statute, regulation or administrative rule: Articles 94.1 and 94.2 of the Industrial Property Law (Law No. 20-00, May 8, 2000).

• Use by a licensee or with the consent of the proprietor constitutes use by the proprietor. There is no need to register the license agreement in order for the licensor to benefit from the licensee's use of the mark.

• The time frame within which a mark must be used in order to avoid cancellation runs from:

• the date of registration.

• Counting from the above date, to avoid cancellation for non-use, the mark must be used within: three years.

• The consequences of use's being interrupted are: If use is interrupted for more than three years without just cause, the mark's registration would not be renewed. Any party could interpose a cancellation petition against the registration based on non-use during the interruption of use for more than three years without just cause.

• An application for cancellation may be based on multiple grounds (i.e., on a combination of absolute, relative and non-use grounds).

• The advantages of filing an action based on multiple grounds are as follows: It is important to note that for a combination of absolute and relative grounds the correct term would be "annulment," since the term "cancellation" is used only for non-use grounds. However, annulments can be based on non-use grounds provided that an absolute or relative ground is also alleged, thereby increasing the plaintiff's chances of success.

• If an action is based on multiple grounds and the action could be disposed of on one ground, the other grounds will nevertheless be considered.

• Additional grounds for cancellation may be introduced at a later stage in the proceedings. The deadline for introducing additional grounds is: Additional grounds for cancellation may be introduced together with closing arguments (within the deadline to submit closing arguments).

• The forum for cancellation proceedings is the same, regardless of the grounds for cancellation.

• Cancellation proceedings based on all grounds may be brought before the following administrative body: Director del Departamento de Signos Distintivos de ONAPI (Director of the Distinctive Signs Department of the National Office of Industrial Property (Oficina Nacional de la Propiedad Industrial)).

• The administrative body/bodies listed above is/are not independent of the trademark registry.

• The parties that have legal standing to apply for cancellation vary, depending on the grounds for cancellation.

• For cancellations based on absolute grounds, the following parties have standing:

• any person. Legal interest is not required.

• For cancellations based on relative grounds, the following parties have standing:

• any interested person. Legal interest is required.

• For cancellations based on non-use grounds, the following parties have standing:

• any person. Legal interest is not required.

• For purposes of standing, a “person” is defined as:

• both natural and juridical persons.

• For purposes of standing, an “interested person” is defined as:

• someone who has filed an earlier, pending application to register a conflicting trademark;

• someone who owns an earlier conflicting trademark registration;

• someone who owns earlier rights in a copyright or design that conflicts with the mark that is the subject of the trademark application;

• someone who owns rights in a conflicting trademark that were acquired through use;

• someone who is a licensee of any conflicting trademark or other intellectual property right;

• someone who owns a company name that conflicts with the mark that is the subject of the trademark application.

• The legal standing criteria for domestic and foreign applicants are the same, regardless of the grounds for cancellation.

• More than one applicant may apply jointly for cancellation, regardless of the grounds for cancellation.

• In a court action for trademark infringement, cancellation of the plaintiff's trademark registration may be sought by a defendant.

• The applicant is required to appoint a representative (attorney, agent or other legal representative) in cancellation proceedings in the following circumstances: the applicant does not have a local address or domicile.

• The representative must be domestic, i.e., with an office in the jurisdiction.

• There are no additional professional qualifications that are required of a representative in cancellation proceedings in the administrative stage. For the judicial stage, the representative must be an attorney member of the Dominican Bar Association.

• A signed power of attorney must be provided to a representative by an applicant in cancellation proceedings.

• There are no notarization/legalization requirements for a power of attorney form in cancellation proceedings in the administrative stage, since this jurisdiction joined the Trademark Law Treaty. For the judicial stage, if the plaintiff is not Dominican, there must be notarization by Apostille or legalization before the Dominican Consulate if the country of execution has not adhered to the Apostille Convention. If the plaintiff is Dominican, notarization by a notary public is required.

• Cancellation proceedings that are independent of opposition proceedings may be commenced before a mark is registered, regardless of the grounds on which they are based. However, the 45-day opposition period following the publication of the application must have expired before the cancellation action can be brought. This is true regardless of whether the Certificate of Registration has been issued.

• The deadline for bringing cancellation proceedings varies, depending on the grounds for cancellation.

• For proceedings based on absolute grounds, the deadline is: five years after issuance date.

• For proceedings based on relative grounds, the deadline is: There is no deadline.

• For proceedings based on non-use grounds, the deadline is: at any time, provided the plaintiff can prove that the defendant has not used the mark during the three consecutive years immediately prior to the filing of the cancellation action.

• There is no statute of limitations or acquiescence provision that would prevent cancellation, regardless of the grounds for cancellation.

• Partial cancellation of a registration is possible only if the cancellation is based on the following grounds:

• absolute grounds;

• relative grounds;

• non-use grounds.

• For single-class registrations and for multiclass registrations, it is possible to apply for cancellation of some of the goods either within the single class or within a given class, as appropriate, without applying for cancellation of all of the goods within the class.

• The average duration of cancellation proceedings is: six months.

• After final arguments have been made and/or oral hearings have taken place, a decision will be rendered within the following time frame: two months.

• The following costs and fees are associated with initiating cancellation proceedings:

• attorney fees;

• statutory or regulatory fees.

• No official fees are refundable if an application for cancellation is withdrawn, regardless of the grounds for cancellation.

• If an application for cancellation is based on multiple grounds, no additional official fees are due.

• The following documents must be notarized in cancellation proceedings, regardless of the grounds for cancellation: Current PTO policy requires that evidence submitted to show use, well-known status and other arguments be notarized, and, if of foreign origin, legalized by Apostille.

• The documentation that must be submitted and the procedures necessary to initiate cancellation proceedings vary, depending on the grounds for cancellation.

• The documentation and procedures to initiate cancellation proceedings based on absolute grounds are as follows: None.

• The documentation and procedures to initiate cancellation proceedings based on relative grounds are as follows: documentation showing that plaintiff has prior and better-founded rights.

• The documentation and procedures to initiate cancellation proceedings based on non-use grounds are as follows: None.

• No party may request that any other party answer written questions, under oath ("Interrogatories").

• No party may request that any other party produce documents in response to written document requests ("Document Requests").

• No party may request that one or more witnesses for any other party appear in person to be cross-examined under oath ("Depositions").

• The burden of proof can shift to the other party during the course of cancellation proceedings under the following circumstances: cancellation based on non-use grounds.

• Written arguments are mandatory.

• The deadline for the applicant to submit written arguments is determined by statute, rule or regulation and is: 30 days after notification sent by the PTO.

• The deadline for the respondent to submit written arguments is determined by statute, rule or regulation and is: 30 days after notification sent by the PTO.

• Extensions of time are available to the applicant to file written arguments.

• The duration of the extension is: 30 days.

• The following number of extensions is available: one. An additional two extensions could be granted, but the request must be well founded.

• Extensions of time are available to the respondent to file written arguments.

• The duration of the extension is: 30 days.

• The following number of extensions is available: one. An additional two extensions could be granted, but the request must be well founded.

• Extensions do not require the consent of the adverse party.

• Extensions require the approval of the court, other judicial tribunal or administrative body.

• The following official fees must be paid to obtain extensions: USD 10.

• Oral hearings are not permitted in cancellation proceedings.

• The following types of evidence may be submitted to establish absolute grounds: persuasive legal precedents and doctrine.

• Evidence must be submitted to: an administrative court.

• Evidence must be submitted by the following deadline: on or before the date on which the last rebuttal writ or closing arguments are submitted. Written arguments must be submitted along with the evidence.

• The following types of evidence may be submitted to establish relative grounds: evidence showing prior use, prior registrations abroad, notoriousness of a plaintiff's mark, legal precedents.

• Evidence must be submitted to: an administrative court.

• Evidence must be submitted by the following deadline: Evidence as well as written arguments must be submitted at any time within the last deadline provided to submit closing arguments.

• The following types of evidence may be submitted to establish non-use grounds: none for the plaintiff; the defendant has the burden to show proof of use. However, the plaintiff is encouraged to request a use inspection as evidence.

• Evidence must be submitted to: an administrative court.

• Evidence must be submitted by the following deadline: at any time during the discovery period (six months); evidence must be submitted together with written arguments.

• The applicant must submit proof of use of the mark on which the cancellation is based only when the cancellation is based on lack of use.

• Extensions of time available for the applicant's submission of evidence are the same, regardless of the grounds for cancellation. Extension is possible for: 30 days after notification by the PTO.

• Official fees payable to obtain an extension for submitting evidence are as follows: USD 10.

• Additional evidence may be submitted at a later stage in the cancellation proceedings. The deadline for submitting additional evidence is: Additional evidence may be submitted together with closing arguments within the deadline to submit said arguments.

• Evidence in reply is optional.

• Evidence in reply must be submitted by the following deadline: together with the submission of written arguments.

• The following extensions of time for the respondent's submissions are available: Extensions of 30 days are available, by authorization of the court; the deadline is computed from the authorization notification date.

• The official fees payable to obtain these extensions are: USD 10.

• Petitioner cannot demand that respondent provide additional particulars relating to the respondent's proffered evidence.

• The respondent may submit the following kind of evidence to prove use:

• invoices;

• catalogues;

• evidence of turnover;

• packaging;

• labels;

• price lists;

• advertisements;

• written statements;

• market surveys;

• use of the mark on the Internet;

• maintenance of a website;

• use of the mark on a social media site.

• In assessing whether "use has been made," sufficient use is demonstrated by: use of the mark as defined in the Industrial Property Law (see below).

• The following factors are considered when determining whether a mark has been sufficiently used: 

• the nature of the goods or services at issue;

• market characteristics; 

• the scale and frequency of use of the mark; 

• export use.

• Respondent cannot demand that petitioner provide additional particulars relating to the petitioner's proffered evidence.

• The consequences if a respondent fails to file a response or answer to a petition for cancellation are as follows:

• The court, other judicial tribunal or administrative body must consider and decide the matter on the merits despite such failure.

• Acquired distinctiveness can be a valid defense in cancellation proceedings based on absolute grounds. The following criteria are used to establish acquired distinctiveness: amount, nature and scope, and time of use of the mark; survey evidence.

• Non-use can be excused, thereby avoiding cancellation, if there are valid excuses, such as country import restrictions or tardiness in the issuance of health sanitary registrations. Absence of consumer demand for the product or absence of sufficient economic resources is not a valid excuse.

• A cancellation decision will not include a formal monetary award against the losing party, regardless of the grounds for cancellation.

• The successful party is not entitled to recover attorney fees, regardless of the grounds for cancellation.

• A decision in cancellation proceedings is valid against all third parties, regardless of the grounds for cancellation.

• A decision ordering cancellation of a mark takes effect: after the decision is final, if the parties fail to appeal, or, if an appeal was introduced, on the date the decision was rendered.

• Cancellation proceedings can be terminated by withdrawing the cancellation application, regardless of the grounds for cancellation.

• Withdrawal of a cancellation application does not require the approval of the court, other judicial tribunal or administrative body; termination is automatic.

• Withdrawal of a cancellation application does not require the approval of the other party to the proceedings; termination is automatic regardless of the grounds for cancellation.

• When cancellation applications are withdrawn, the cost of the proceedings is borne by: each party.

• A cancellation decision may be appealed.

• Appeals of cancellation decisions must be brought before the following deadline: for an administrative appeal before the General Director of the PTO, 15 days; for a judicial appeal before the Court of Appeals, 30 days.

• Regardless of the grounds for cancellation, appeals are heard by

• the following administrative body: the General Director of the PTO.

• New evidence may be submitted on appeal.

• The approximate cost range of official fees (in local currency) to file an appeal is: for an administrative appeal, DOP 3,450.

• Specialist counsel is required for an appeal of a cancellation decision. Counsel is not required for an administrative appeal but is required for a judicial appeal.

• An appeal decision cannot include a monetary award against the losing party. A cancellation action cannot include a monetary award at any stage of the proceedings.

• An appeal is limited to points of law.

• Appeal decisions may be further appealed.

• Appeal decisions may be appealed to: the Court of Appeals for Civil and Commercial Matters of Santo Domingo.

• In lieu of an appeal, the following procedure is available: A reconsideration recourse may be interposed prior to an appeal, but only if new evidence is submitted.

• The terminology relating to cancellation proceedings can vary from jurisdiction to jurisdiction. Within jurisdictions, the grounds for cancellation can ultimately influence the legal consequences of the cancellation.

• In this jurisdiction, if an applicant is successful in obtaining cancellation, the legal consequences of the cancellation will depend on the grounds for cancellation (see below).

• If an applicant succeeds in obtaining cancellation on absolute grounds:

• the mark is considered as if it were never registered.

• If an applicant succeeds in obtaining cancellation on relative grounds:

• the mark is considered as if it were never registered.

• If an applicant succeeds in obtaining cancellation on non-use grounds:

• the mark is considered as having been validly registered until the date of the decision to cancel the mark.

• If an applicant succeeds in obtaining cancellation on grounds other than absolute, relative or non-use grounds:
  • Other: N/A

• The consequences for past assignments if a mark is cancelled are: They are left without effect.

• The consequences for past licenses if a mark is cancelled are: A license does not require recordal with the PTO. The consequences will vary depending on actions taken by the licensee against the licensor under common civil or commercial law.

• The consequences for past contracts if a mark is cancelled are: The object of the contract is cancelled.

• Following a decision to cancel a mark, the Trademark Office must be formally notified of the cancellation, regardless of the grounds for cancellation.

• The following party has the responsibility to notify the Office: the plaintiff.

• The deadline to make the notification is: None.

• The consequences of failing to meet the deadline to notify the Trademark Office are: Not applicable. There is no deadline.

• There are limitations as to when an application to register the mark can be refiled, depending on the grounds for cancellation. If the cancellation is based on relative grounds, the winning party or a third party may apply. If the cancellation is based on absolute grounds, an application to register the mark may not be refiled.

• There are no time limits for refiling following the cancellation of a mark, with the exception of actions based on non-use grounds (see above).

• Collective marks may be registered in this jurisdiction. A collective mark is defined as: a mark whose owner is a collective entity that groups persons authorized to use the mark (Article 70(b) of the Industrial Property Law (Law No. 20-00, May 8, 2000)).

• There are certain unique provisions in the law of this jurisdiction in relation to the cancellation of collective marks on absolute, relative, non-use or other grounds, as follows: if the mark is not being used according to the owner's guidelines.

• Certification marks may be registered in this jurisdiction. A certification mark is defined as: a mark applied to products or services of third parties, whose characteristics or quality has been certified by the owner of the mark (Article 70(c) of the Industrial Property Law (Law No. 20-00, May 8, 2000)).

• There are certain unique provisions in the law of this jurisdiction in relation to the cancellation of certification marks on absolute, relative, non-use or other grounds, as follows: if the use of the mark is contrary to the trademark owner's guidelines.

If you would like to know the trademark registration process of Ecuador ? Click on here!

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