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SPAINADDRESS:University of Alicante, Campus San Vicente del Raspeig, Edificio Torre de Control, 03690 Alicante, Spain TEL: +34 96 590 9684 E-MAIL: [email protected] WORKING HOUR: Monday - Friday 9:00 -16:30 (CEST) BRAZIL ADDRESS: Rua Marquês de Olinda, 70 – Botafogo. Rio de Janeiro-RJ, CEP 22251-040 TEL: +55 21 2237-8728 E-MAIL: [email protected] WORKING HOUR: 9h00 - 18h00 (GMT-3)
MEXICO ADDRESS (1): c/del Puente 222 Ejidos de Huipulco, Tlalpan 14380, Ciudad de México, Distrito Federal TEL: +52 (55) 5483-2252 E-MAIL: [email protected] WORKING HOUR: 9h30-18h30 (GMT-5)
ADDRESS (2): Avenida Eugenio Garza Lagüera & Rufino Tamayo, Valle Oriente, San Pedro Garza García, 66269, Nuevo León, México TEL: +52 (81) 86256000 E-MAIL: [email protected] WORKING HOUR: 9h00-17h30 (GMT-5) CHILE ADDRESS: Galvarino Gallardo 1690, Providencia, Santiago TEL: (56-2) 2 787 8422 – 2 787 8400 E-MAIL: [email protected] WORKING HOUR: 9h30-18h30 (GMT-3)
Latin America IPR SME Helpdesk IP Factsheet: Dominican Republic
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Last Update September 2016
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Disclaimer:The Latin America IPR SME Helpdesk is a free service which provides practical, objective and factual information aimed to help European SMEs understand business tools for developing IPR value and managing risk. The services are not of a legal or advisory nature and no responsibility is accepted for the results of any actions made on the basis of its services. The content and opinions expressed are those of the authors and do not necessarily represent the views of the European Commission and/or the Executive Agency for Small and Medium-sized Enterprises or any other body of the European Union. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seek independent advice. Neither the European Commission nor the Agency may be held responsible for the use which may be made of the information contained therein.
© 2016 - Latin America IPR SME Helpdesk - A project funded by the European Union´s COSME Programme (2014-2020)
Co-funded by:
European Union
MANAGE YOUR INTELLECTUAL PROPERTY IN LATIN AMERICA
ABOUT LATIN AMERICA IPR SME HELPDESK:The Latin America IPR SME Helpdesk offers free of charge, first-line support on IP and IP rights matters to facilitate the expansion of European SMEs (EU SMEs and SMEs from the Associated countries) already established at, or working with entities in Latin America as well as those potentially interested in establishing commercial and R&D activities and ventures in these countries.
SERVICESHelpline: Ask our experts any IP related questions in Latin America! We provide professional IP advice – customized, straightforward, and free of charge. Our Experts will answer your question within three working days.
Newsletter: Keep track of the latest news on IP in Latin America relevant to your business.
Multi-lingual Webportal: Browse our multilingual web portal for a broad range of information and training materials on IPR in Latin America in English, Spanish, Portuguese, French and German.
Training: Attend our trainings (online and on-site) and learn more about the key aspects of IPR protection and enforcement issues for doing business in Latin America.
For more information please contact the Helpdesk:[email protected]@latinamerica-ipr-helpdesk.eu
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GDP: € 61,4 billion in 2014 – (Source: World Bank) Annual growth rate: 7.3 in 2014 – (Source: World Bank) Population: 10.41 million in 2014 – (Source: World Bank) EU imports in goods 2015: € 874.37 million – (Source: DG Trade)EU exports in goods 2015: € 1,623.97 million – (Source: DG Trade) Total EU trade in goods 2015: € 2,498.33 million – (Source: DG Trade)
B. KEY INDUSTRY SECTORS
The Dominican Republic is the ninth largest economy of Latin America and the first in the Caribbean Region.
Over the last two decades the Dominican Republic has stood out as one of the fastest-growing economies in the Americas with an average real GDP growth rate of 5.4% between 1992 and 2014. It remained the fastest growing economy in the region in 2014 and 2015 with a GDP growth rate of around 7 percent.
Despite the still important weight of traditional sectors such as mining and agriculture, recent growth has been driven by construction, manufacturing and tourism, and services recently overtook agriculture as the driving force of the economy.
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The Facts: Business Facts in the Dominican Republic for EU Companies
A. SIZE of the marketB. KEY INDUSTRY SECTORS
IPR for SMEs in the Dominican Republic: BACKGROUND
A. Intellectual Property Rights for SMEs: Why is this relevant to you?B. How does the Dominican Republic's IP legal framework compare with INTERNATIONAL STANDARDS?
IPR Rights in the Dominican Republic: THE BASICS
A. Copyright and related rightB. Patents and Utility ModelsC. Industrial Designs D. TrademarksE. Trade secretF. Appellation of origin
Enforcing your IPRs
Using CUSTOMS to block counterfeits
RELATED LINKS and Additional Information
GLOSSARY
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1. The Facts: Business Facts in the Dominican Republic for EU Companies
A. SIZE of the market
1,624874
2,498
B. How does the Dominican Republic's IP legal framework compare with INTERNATIONAL STANDARDS?
The institution in charge of IP matters in the Dominican Republic is ONAPI (Oficina Nacional de la Propiedad Intelectual). http://www.onapi.gov.do/
The Dominican Republic’s IP framework is composed by:
• InternationalTreaties,AgreementsandConventionsratifiedbythe country
• Nationallaws
Regarding the first group, the Dominican Republic is member of the following International Treaties and Conventions:
• AgreementonTrade-RelatedAspectsof IntellectualPropertyRights (TRIPS) (more information here)
• ParisConventionfortheProtectionofIndustrialProperty(moreinformation here)
• MadridAgreement for theRepressionofFalseorDeceptiveIndications of Source on Goods (more information here)
• RomeConventionfortheProtectionofPerformers,Producersof Phonograms and Broadcasting Organizations (more information here)
• BerneConventionfor theProtectionofLiteraryandArtisticWorks (more information here)
• Convention Establishing theWord Intellectual PropertyOrganization (more information here)
• WIPOPerformancesandPhonogramsTreaty(moreinformationhere)
• WIPOCopyrightTreaty(moreinformationhere)• PatentCooperationTreaty(PCT)(moreinformationhere)• Budapest Treaty on the International Recognition of the
Deposit of Micro-organisms for the Purposes of Patent Procedure (more information here)
• TrademarkLawTreaty(TLT)(moreinformationhere)• SingaporeTreatyontheLawofTrademarks(moreinformation
here)
In connection with this, the Dominican Republic has implemented its own national laws and regulations. The following are the most relevant:
• LawNo.20-00onIndustrialProperty(moreinformationhere)• LawNo.65-00onCopyright(moreinformationhere)• LawNo.424-06onImplementationoftheDominicanRepublic
– Central America – United States Free Trade Agreement (more information here)
• ResolutionNo. 001-2011/DIR-ONAPI Resolution of theDirector General on aspects of the Patent Cooperation Treaty (PCT) (more information here)
LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: DOMINICAN REPUBLIC1
2. IPR for SMEs in the Dominican Republic: BACKGROUND
A. Intellectual Property Rights for SMEs: Why is this relevant to you?
Intellectual Property (IP) refers to any creation, invention or sign that can be used in commerce and is capable of generating profit for its creator, inventor or holder. Therefore it must be considered as part of a company’s intangible assets. IP is usually divided into two branches, namely Intellectual Property, which relates to inventions, designs or signs used in commerce, and Copyright (‘derechos de autor’ in Spanish), which relates to literary, scientific and artistic works.
Intellectual Property Rights (IPRs) are exclusive rights granted by a national authority or by law that allow their holders to prohibit all unauthorized use or exploitation of their creations, inventions or signs by third parties. IPRs are exclusive, territorial and temporary and their term and scope differs depending on the type of IPR and on the country.
The importance of IPRs therefore lies in the possibility of generating assets for companies based on exploitation of the exclusive right granted and its protection against unfair competitive practices.
The creation and protection of most IPRs, namely copyrights, trademarks and industrial designs, does not require significant capital investment in comparison to the potential advantages, whereas development and protection of inventions (patents) tends to be more expensive. In both cases, SMEs are able to benefit from protection of the right and therefore management and exploitation of their IPRs by enabling them to:
• Differentiate from competitors• Constitute a strong basis to build goodwill in the market• Generate income through other business models such as
licensing or franchising• Protect intangible assets that could be even more important
than tangible assets • Prevent third parties from using their names, inventions,
creative works…
Although Intellectual Property legislation enjoys a certain degree of international harmonization, the legislation of the Dominican Republic differs somewhat from that of the EU. The purpose of this Factsheet is to explain the differences concerning copyright, patents, industrial designs, trademarks, trade names, geographical indications and appellations of origin.
LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: DOMINICAN REPUBLIC 2
The EU is present in the Dominican Republic with a delegation in Santo Domingo. In October 2008 the EU signed the Economic Partnership Agreements (EPAs) with the African, Caribbean and Pacific countries, in which the Dominican Republic is included. This agreement establishes the implementation of transparent policies in accordance with international rules, including Intellectual Property Rights.
Some of the areas that have experienced improvements are enforcement against medicine counterfeiting, a slight reduction of the patents backlog and the launch of an online database. However the Dominican Republic IP framework has received some criticism with regards to:
• Wide-spreadavailabilityofcounterfeitandpiratedproducts• Piracyofsoftware/satellitesignals• LackofexpertiseandemphasisonIPissuesbyauthorities• Patentbacklog• Theprotectionofundisclosedtestsagainstunfaircommercialuse
Source. 301 Special Report 2016 Edition
3. IPR Rights in the Dominican Republic: THE BASICS
A. Copyright and related rights
WHAT are Copyright and Related Rights?
Copyright protects artistic, literary and scientific works that could be reproduced or disclosed by any current or future means such as books, lectures, musical compositions, sculptures, computer programs, etc. This protection covers both original and derivative works (e.g. adaptations, compilations, transformations, translations or arrangements).
Related rights protect the rights of those persons who are not authors but who contribute in some way to the creation, embodiment or communication of the work. Some examples are musicians who perform in a concert, actors and book editors.
For copyright protection, works must meet the originality requirement, in the sense of being unique, ingenious and/or creative.
What do you need to know?
Copyright in the Dominican Republic is split into two categories of rights:
• Moral rights are personal rights of the author which cannot be transferred to third parties. The main ones are the right to be recognized as author, the right to decide to publish the work and the right to the integrity of the work (i.e. the right of the author to impede any modification of his/her work without his/her consent).
• Economic rights, derived from the property of a work, granting the author (or owner) the right to prevent third parties from: communicating to the public (e.g. exhibition in a gallery), reproducing, distributing and transforming the work. Economic rights can be transferred or licensed to allow third parties to exploit the work. The transfer or license can be performed over all the economic rights recognized by the law or only in relation to some of them. The transfer or license of rights must be implemented by means of a written agreement.
HOW LONG does legal protection last?
The exclusive right granted by Copyright and Related Rights starts from the moment of its creation and lasts during the author’s lifetime plus seventy years after his/her death. However, the starting date of protection may vary depending the type of work (e.g. in case of collective works or computer program starts from the date of publication or date of creation, if not published within 50 years after creation).
TITLE OF A WORK
The Dominican Republic also protects the title of a work by copyright. Therefore, the author or holder may prevent the use of a distinctive and characteristic title in any other similar work.
INTERNATIONAL TRADEMARK REGISTRATIONS
The Dominican Republic is not a member of the Madrid Protocol. Therefore if your company is interested in applying for a Trademark in the Dominican Republic Therefore if your company is interested in applying for a Trademark in the Dominican Republic you will need to apply locally.
SCOPE of PROTECTION
In both, the Dominican Republic and Europe, copyright does not protect the idea itself, but how the idea is expressed or embodied (the “works”).
HOW do I register?
Copyright registration is not mandatory in the Dominican Republic. The work is protected against any infringement from its creation, even without formal registration. Nevertheless, registration can be a very useful in enforcement actions as a proof of ownership, and, in particular as evidence of the date of creation or the content of the work itself (e.g. the protected source code).
The application process is quite simple. Once the documents are filed, the national authority conducts a formal examination and grants the registration certificate within a month from the filing date. The checklist for filing is as follows:
a) Filed official form b) Identification of the work c) Copy of the workd) Payment of official fees
WHO can register?
The creator of the work must be a natural person to be recognized as an author. Companies and any other legal entities may own certain rights (economic rights) over the work in the Dominican Republic. However they are not entitled to be authors of a work.
In the absence of proof to the contrary, the person whose name, pseudonym, initials or any other conventional marks or signs that are well-known equivalents of the name itself appear on a work or on reproductions thereof or are mentioned in the communication or any other form of public dissemination of the work shall be considered the author thereof.
HOW much does it cost?
Fees vary according the type of work:
Fees Cost
Musical composition € 3
Audiovisual work € 21
Screenplay € 21
Literary work € 9
Photography € 21
Blueprints € 21
Sound recording € 17
B. Patents and Utility Models
A patent is a set of exclusive rights granted by the state to an inventor or his assignee; it is a monopoly over the product or process. A patent is a territorial right; therefore it is necessary to apply for registration on a country-by-country basis.
Dominican Republic legislation provides two different types of protection for inventions:
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• Creations that are not considered inventions: discoveries, scientific theories, mathematical methods, aesthetic creations (protected as Industrial Design), economic or business methods, exclusively mental activities or games, presentation of information, computer programs (protected as copyright), therapeutic, diagnostic or surgical treatments for humans or animals, living matter, pre-existent substances in nature, combination of prior existing inventions (unless the combination fulfils the patent requirements, i.e. novelty, inventiveness and industrial application)
• Prohibitions: inventions the use of which may be contrary to public order or public morals, those contrary to the health and life of humans or animals and may harm the environment and plants or animals (except microorganisms and biological process for the production of plants or animals)
Second use Patents (see Glossary) are not allowed either under Dominican Republic Intellectual Property Law.
HOW LONG does legal protection last?
Patent are granted for twenty (20) years from the application date. In the case of utility models, the term is fifteen (15) years from application; both are subject to the yearly payment of maintenance fees. The granting procedure takes around five years for Patents and no more than four for Utility Models.
HOW do I register a Patent or Utility Model?
The application procedures for both patents and utility models are identical in the Dominican Republic and can be represented as follows: 1. Application
File an application with ONAPI (Oficina Nacional de la Propiedad Industrial), including the following information:
• Filed application form • Nameoftheinvention• Description: disclosing the invention clearly enough for
evaluation and for its reproduction • Claims:indicatingwhatexactlywasinventedandwhatisgoing
to be protected by the patent• Summaryoftheinvention• Drawings(ifnecessary)• Proofofpaymentofofficialfees• Declarationof priority (if claimed, seeGlossary formore
information)• Powerofattorney• Assignmentagreement (if theapplicant for thepatent is
different from the inventor)• Identificationoftheinventor,applicantandlegalrepresentative
(national ID or passport, addresses, phone numbers, e-mails…)
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Patents, to protect technical solutions that consist in a process (e.g. a process to improve wood slicing) or a product (e.g. a new type of glue or an automated syringe).
Utility models protect new shapes, configuration or disposition of elements of a product, tool, instrument or mechanism that improve or transform its performance, use or manufacture providing a different use, advantage or technical effect. Processes and substances cannot be protected as Utility Models.
What you need to know
In the Dominican Republic, patents and utility models must fulfill certain requirements to be protected:
Novelty: An invention is considered new when it is not included in the state of the art. The state of the art comprises everything that has been made available to the public by written or oral description, by use or marketing or by any other means prior to the filing date of the patent application or, where appropriate, the recognized priority date (see Glossary).
Inventive step: An invention is regarded as involving an inventive step if the invention is neither obvious nor obviously derived from the state of the art for an expert with average skills in the technical field concerned.
Industrial applicability: An invention is deemed industrially applicable when its subject matter may be produced or used in any type of industry. In this context, industry includes all productive activity, including services.
DISCLOSURE and GRACE PERIOD
Remember that if you disclose your invention before applying for a Patent, your disclosure will become part of the “state of the art” and may jeopardize any future application.
This notwithstanding, the Dominican Republic provides for a grace period during which public disclosure of an invention (under certain conditions) does not affect the validity of a subsequent Patent application, provided that a complete application is filed within 12 months of disclosure. For more information about the grace period in Dominican Republic, please contact our Helpline.
European countries do not award a grace period. Take this into account when planning your international protection strategy.
Excluded from patentability: some creations cannot be protected either as patent or as utility model in the Dominican Republic:
LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: DOMINICAN REPUBLIC
2. Formal Examination
The National Authority will examine, within sixty (60) days of the date of the application, whether the application complies with the formal requirements. You will be notified of any omission or deficiency and a two month correction period begin on the notification date.
Before publication of the application you are entitled to transform your patent application into a utility model application.
3. Publication and Observations
Upon completion of the eighteen-month (18) period counting from the filing date of the patent application or, as appropriate, from the date of the applicable priority, the application will be published in the Official Gazette (available in Spanish at http://www.onapi.gov.do/publicaciones-2015-2019.html).
Interested third parties may file observations concerning the patentability requirements of the application within 60 days from publication. The observations, which will be taken into account in the substantive examination phase, do not suspend the proceedings.
In the event that your application receives observations, you have the right to response or to allege whatever you consider relevant concerning the observations during a 60 days period after ONAPI notifies you the observations.
4. Substantive examination and grant of the Patent
Prior to the substantive examination, you must pay the Examination fee within twelve (12) months of the publication announcement.
At this stage ONAPI will examine the application to decide if it meets the patentability requirements (novelty, inventiveness and industrial application). If the examination is favorable, ONAPI will grant the patent and publish it in the Official Gazette.
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WHO can register?
The applicant for a Patent may be a natural or legal person. If the applicant is not the inventor, the applicant must provide evidence of the right to apply for the patent (i.e. assignment by the inventor).
It is not mandatory to appoint a representative. However, if you do not have a legal domicile in the Dominican Republic a local representative must be appointed for notification purposes.
HOW much does it cost?
PATENTS
Fees Cost
Patent application € 205
Patent application publication € 62
Substantive Examination € 245
Patent concession publication € 82
UTILITY MODELS
Fees Cost
Utility Model application € 143
Utility Model application publication € 62
Substantive Examination € 164
Utility Model concession publication € 82
LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: DOMINICAN REPUBLIC
C. INDUSTRIAL DESIGN
What are Industrial Designs?
Industrial designs protect the external appearance of the whole or part of a product. The protection is granted to any combination of lines, shapes or colors or any two-dimensional or three-dimensional shape, whether or not combined with lines or colors, that may serve as a pattern for the industrial or handcrafted manufacture of a given product.
WHAT do you need to know?
Industrial design protection requirements:
a) Novelty: an industrial design is not deemed new when, before the application date, it has been made available to the public by means of a description, use or by any other mean. In the Dominican Republic Industrial Design applicants also benefit from a 12-month grace period under certain conditions (see Patents section and/or contact our Helpline for further information.
b) Individual character: An industrial design is not deemed to have Individual character if it causes the same general impression as an already existing design.
WHAT CANNOT BE PROTECTED AS A DESIGN
• Designs that are solely dictated by their technical function
• Designs already protected under other IPRs (namely trademarks and copyright)
• When they are contrary to morality or public order or contain elements of public interest, e.g. the national flag
HOW LONG does legal protection last?
The industrial design affords exclusivity for 5 years from the filing date of the application and may be renewed for two additional periods of 5 years each. The average granting period for designs rarely exceeds one year.
HOW do I register?
The granting procedure for designs is very similar to patent application (see above). Once filed, ONAPI proceeds to formal
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examination (30 days for correction of formal deficiencies). Subsequently, the application will be published and third parties may oppose the application within 30 days. No more than six (6) months after publication ONAPI will conduct the substantive examination, which will end with the granting or refusal of the design and its publication.
You should file an application with ONAPI (Oficina Nacional de la Propiedad Industrial), including the following information:
• Filed application form • Descriptionofthedesign• Drawingsorpictures• Sampleoftheproduct(ifnecessary)• ClassificationundertotheLocarnoAgreement/seeGlossary)• Claims:indicatingwhataimstobeprotected• Paymentfees• Declarationofpriority(ifclaimed,seeGlossary)• Powerofattorney(ifnecessary)• Assignmentagreement(ifnecessary)• Identificationofdesigner,applicantand legal representative
(national ID or passport, addresses, phone number, e-mails…)
WHO can register?
The applicant for a design must be a natural or legal person. If the applicant is not the designer, the applicant must provide evidence of the right to apply for the design (i.e. assignment by the designer).
It is not mandatory to appoint a representative However, if you do not have a legal domicile in the Dominican Republic a local representative must be appointed for notification purposes.
HOW much does it cost?
Fees Cost
Industrial design application and substantive examination
€ 219
Publication of Industrial Design application
€ 62
Publication of Industrial Design concession
€ 82
LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: DOMINICAN REPUBLIC
D. TRADEMARKS
WHAT do they protect?
A trademark is any sign or combination of signs with graphical representation and aptitude to distinguish the products or services of an undertaking (person, company, enterprise, etc.) from others. The sign can consist of: words, images, figures, sounds, aromas, letters, numerals, a color or color combination (with certain limits), a tactile sign, the shape of goods or any combination of the aforesaid.
Trademarks in the Dominican Republic: What do you need to know?
A trademark application may be refused by ONAPI on either absolute or relative grounds. Absolute grounds for refusal refer to the nature of the trademark itself, for example:
• Descriptive (e.g. “pineapple” for fruits)• Genericinthecourseoftradeorfailstodistinguishgoodsor
services (e.g. “high quality”)• Contrarytomorals,publicorderorcouldbedeemedoffensive• Infringesanyprior IPR including trademarks,appellationof
origin, copyright emblems, medals, personal names and other rights
• Contrarytothelaw,includingunfaircompetition
Relative grounds for refusal refer to conflict with earlier rights, for instance
• Identical or confusingly similar to a previously registered trademark
• Identicalorconfusinglysimilar toacommercialname,signor emblem used or registered in the Dominican Republic by a third party
• Affectstherightsofathirdparty,especiallyregardinghis/hername, signature or title
• Mayinfringecopyrightorconstituteunfaircompetition
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If you want to know more about these or other grounds for refusal and obtain advice tailored to your specific case, contact our Helpline: it is free, fast and confidential.
HOW LONG does legal protection last?
The registered trademark is granted for 10 years. The holder must pay a renewal fee every 10 years to preserve its validity.
The average granting period for a trademark in the Dominican Republic is three months subject to the fulfillment of all formal requirements and the absence of opposition. In the event of objections or opposition, the granting period may extend to around two years.
HOW do I register?
1. Prior to registration
Prior to the submission of an application it is advisable to conduct a prior trademark search to verify that the Trademark you intend to apply for will not conflict with any prior trademark.
It is highly advisable to hire an IP expert to conduct such a search since he/she will be able to provide you with a comprehensive and exhaustive search and with an analysis on the feasibility of the proposed trademark. However, you could also perform your own search, through ONAPI´s online database http://www.onapi.gov.do/busqueda-consulta.html
2. Application
ONAPI allows filing of a multiclass application for a single trademark. ONAPI uses the International Classification of Goods and Services established by the Nice Agreement to classify goods and services. To check whether products or services are within the same class, please contact our Helpline service.
You must submit your application to ONAPI’s office, including the following:
• Filed application form • Identificationofthetrademark• Drawingsorpictures(ifnecessary)• Classificationunder to theNiceAgreement (establishesan
international classification for trademarks concerning to their product or service)
LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: DOMINICAN REPUBLIC
• Paymentofofficialfees• Declarationofpriority(ifnecessary)• Powerofattorney(ifnecessary)• Identificationofapplicantandlegalrepresentative(nationalID
or passport, addresses, phone numbers, e-mails…)
3. Formal and substantive examination
Firstly, ONAPI will decide if your application fulfils the formal requirements. If not, you are entitled to amend the error or omission within the thirty (30) days following notification of the deficiency.
The Office will then conduct the substantive examination by analyzing whether the Trademark incurs in any of the absolute or relative grounds of refusal. If so, you will be awarded a sixty (60) days period to withdraw, modify or limit the application or to respond to the objections. 4. Publication, opposition and grant
Upon completion of examination the application for registration will be published on the Official Gazette at your expense (available in Spanish at http://www.onapi.gov.do/publicaciones-2015-2019.html)
Any natural or legal person may oppose the application for registration within forty-five (45) days from the publication in the Official Gazette.
Finally, ONAPI will decide on the validity of any opposition and will decide if there are grounds for refusing the application. If not it will grant the trademark and issue the certificate.
WHO can register?
Any natural or legal person may apply for a trademark in the Dominican Republic.
It is not mandatory to appoint a representative. However, if you do not have a legal domicile in the Dominican Republic, a local representative must be appointed for notification purposes.
HOW much does it cost?
TRADEMARKS
Fees Cost
Trademark application (single class) € 97
Trademark application publication € 28
Renewal € 72
E. TRADE SECRET
WHAT you need to know
A trade secret is any undisclosed commercial information that could be used in a productive, commercial or industrial manner and transmitted to another person. The information must comply with the following conditions:
• itisnotgenerallyknown• itisnotaccessibletoothers• ithasbeentreatedasasecretbytheholder,whohasmade
reasonable efforts to maintain the secrecy
Trade secrets do not require registration to be protected. Nonetheless, it is highly recommended to sign a non-disclosure agreement with any person who could be in direct or indirect contact with the trade secret.
The rights granted protect the owner from any unauthorized use, disclosure or acquisition. However it does not protect against the acquisition or development by lawful means such as reverse engineering.
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TRADEMARK PRIORITY
The Paris Convention establishes a six (6)-month priority period for all Trademarks that:
• Havebeenapplied for in anyMemberState (all EUcountries are members)
• Havebeenused inanofficiallyrecognized internationalexhibition
In those cases, the application date in the country of origin or the exhibition date will be the priority date.
The holder will be entitled to oppose third parties’ applications filed after the priority date
LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: DOMINICAN REPUBLIC
HOW LONG does legal protection last?
The trade secret is protected as long as the information remains secret
F. APPELLATION OF ORIGIN
WHAT you need to know
Geographical Indication (GI) is the name of a given country, region or place or a name that is used to identify a product originating therein when its quality, reputation or other characteristics are essentially attributable to its geographical origin.
An Appellation of Origin (AO) is the name of a given country, region or place or a name, which is used to identify a product originating therein when its quality, reputation or other characteristics are essentially attributable to the geographical environment in which it is produced, including both natural and human factors.
An appellation of origin will not be admitted for registration when:
a) It deceives the public on its origin, quality, background or characteristics
b) It is contrary to public order or public moralc) It is the generic or common denomination of a product d) It is confusingly similar to a trademark
HOW LONG does legal protection last?
All producers, manufacturers and/or artisans located in the geographic area of the Appellation of Origin are entitled to use it for commercial purposes regardless of whether or not they were part of the registration process before the national authority. AO/GI are granted for an indefinite period and the registration may be modified at any time.
HOW do I register?
The application procedure for AO/GIs is the same as for trademarks.
You must submit your application to ONAPI’s office, including the following;
• Officialformprovidedbythenationalauthority• IdentificationoftheAO/GI• Twodrawingsorpictures(ifapplicable)• Delimitationofthegeographicalarea• ProductscoveredbytheAO/GI• Summaryoftheessentialcharacteristicsoftheproducts• Paymentofofficialfees• Powerofattorney
• Identificationofapplicantsandlegalrepresentative(nationalID or passport, addresses, phone numbers, e-mails…)
• Legaldomicile
HOW much does it cost?
Fees Cost
AO/GI application € 167
AO/GI publication € 52
4. Enforcing your IPRs
The Dominican Republic’s legislation offers various alternatives for enforcement of IPRs: administrative actions before the national authorities (e.g. in the case of unlawful registration), civil actions (when seeking compensation) and criminal actions (only applicable in the case of trademark or copyright violations).
A. Civil Actions
The right-holder of patents, utility models, designs, trademarks and appellations of origin is entitled to request, before the competent court, cessation of the infringing activity, compensation for damages and seizure and/or destruction of the infringing goods and any goods used to commit the infringement (e.g. computers, moulds…)
As for copyright and related rights, the right-holder is entitled to request, before the court of first instance, payment and compensation for damages and seizure and/or destruction of the goods and any goods used to commit the infringement.
B. Criminal Prosecution
In the Dominican Republic infringers can face up to 3 years of imprisonment and fines up to a maximum of 1,000 times the minimum wage. In the event of insolvency of the infringer, each Dominican peso owed will be replaced by one day in prison, with a limit of two years.
C. Administrative Actions
Administrative actions are lodged before ONAPI and are limited to actions concerning the grant, the existence and the ownership of the IPR, namely cancellation and opposition actions and claims of IPR ownership.
9 LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: DOMINICAN REPUBLIC
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5. Using CUSTOMS to block counterfeits
Using customs to protect intellectual property
The Dominican customs authorities have an Intellectual Property Registry aimed at preventing infringement and fast-tracking customs measures. This registration is open to every holder of a registration certificate before the national authorities (ONAPI or ONDA) or with proof of authorship (in the case of unregistered copyright).
In the case of proven or suspected intellectual property violation, customs authorities may implement the following measures ex oficio or on request of the holder:
• Notify theholderof thenameandaddressof theexporter,importer, carriers and other involved parties
• Quantityofgoods• Notifythejudicialauthoritiesofwithholdingofgoods
However, the customs authorities will release the goods if no legal actions are initiated within 10 days. Likewise, these actions do not apply when the quantity of goods is small with no commercial purposes or entered in personal and private luggage or sent in small quantities.
6. RELATED LINKS and Additional Information
Find out more relevant information on the following websites:
EU delegation in the Dominican Republic: http://eeas.europa.eu/delegations/dominican/index_es.htm
Dominican Intellectual Property Office: http://www.onapi.gov.do
Ministry of Industry and Commerce: http://mic.gob.do/
Law on Intellectual Property: http://www.wipo.int/wipolex/en/details.jsp?id=1190
National Customs Services: http://www.aduanas.gob.do
7. GLOSSARY
Right of priority: Whenever a person from any signatory country of Paris Convention files a national application for a patent or industrial design in any of the 176 Member States, the date on which the first application was filed is established as the date of priority for any future application in any Member State, provided that subsequent applications are applied for within twelve months of the first application. The priority date is very important for patents, utility models and designs since it will be the relevant date to assess the state of the art and evaluate the novelty and inventiveness of the application.
Second use: Refers to the possibility of patenting a different use of an already known object/product (e.g. use of a chemical composition as a medicine to treat heart disease when the original patent claims its use as antibiotic). In general, in Europe it is possible to patent such a second use subject to fulfillment of the novelty and inventive step requirements.
Version September 2016
LATIN AMERICA IPR SME HELPDESK - IP FACTSHEET: DOMINICAN REPUBLIC
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SPAINADDRESS:University of Alicante, Campus San Vicente del Raspeig, Edificio Torre de Control, 03690 Alicante, Spain TEL: +34 96 590 9684 E-MAIL: [email protected] WORKING HOUR: Monday - Friday 9:00 -16:30 (CEST) BRAZIL ADDRESS: Rua Marquês de Olinda, 70 – Botafogo. Rio de Janeiro-RJ, CEP 22251-040 TEL: +55 21 2237-8728 E-MAIL: [email protected] WORKING HOUR: 9h00 - 18h00 (GMT-3)
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Latin America IPR SME Helpdesk IP Factsheet: Dominican Republic
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Last Update September 2016
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Disclaimer:The Latin America IPR SME Helpdesk is a free service which provides practical, objective and factual information aimed to help European SMEs understand business tools for developing IPR value and managing risk. The services are not of a legal or advisory nature and no responsibility is accepted for the results of any actions made on the basis of its services. The content and opinions expressed are those of the authors and do not necessarily represent the views of the European Commission and/or the Executive Agency for Small and Medium-sized Enterprises or any other body of the European Union. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seek independent advice. Neither the European Commission nor the Agency may be held responsible for the use which may be made of the information contained therein.
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