Trade and Service Marks
– Marks, Collective Marks and Trade Names Act No. 12 of 1999, in force since February 2, 2009.
– Marks, Collective Marks and Trade Names Regulations, 2009, in force since February 10, 2009.
Membership in International Conventions
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), party since November 3, 1978.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Convention Establishing the World Intellectual Property Organization (WIPO), since September 26, 1998.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since August 7, 1999.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since September 8, 2000.
Applicant: registration is based on priority, thus the first to file is entitled to registration. An applicant who resides or has his principal place of business outside Dominica must be represented by a legal practitioner resident and practicing in Dominica.
Types of protection: word marks, logos, service marks, marks in color and series of marks.
Non-registrable marks: a mark cannot be validly registered if it is (a) incapable of distinguishing the goods or services of one enterprise from those of other enterprises; (b) contrary to public order or morality; (c) likely to mislead the public or trade circles in particular as regards the geographical origin of the goods or services concerned or their nature or characteristics; (d) identical to, or is an imitation of, or contains as an element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of or official sign or hallmark adopted by, a State, intergovernmental organization or organization created by an international convention, unless authorized by the competent authority of that State or organization; (e) identical to, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well-known in Dominica for identical or similar goods or services of another enterprise, or if it is well-known and registered in Dominica for goods or services which are not identical, or similar to those in respect of which registration is applied for, provided, in the latter case, that (i) use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark; and (ii) that the interests of the owner of the well-known mark are likely to be prejudiced by such use; or (f) identical to a mark belonging to a different owner and already on the Register, or with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion.
Classification: International Classification (10th Edition).
Multiple class filing is permitted.
Filing requirements for an application (to be sent to a licensed resident agent):
1. Power of attorney;
2. Length of use of mark prior to application;
3. Classes in which the mark is to be registered;
4. Name and address of the applicant;
5. 10 representations of the mark (8.5 cm wide and 10 cm long);
6. If the applicant wishes to claim color as a distinctive feature of the mark, the applicant must indicate the name or code of the color claimed and an indication in respect of each color of the principal parts of the mark which are in that color;
7. Prescribed fee.
Examination: both substantive and as to formalities. Examination occurs prior to the grant and before publication.
Opposition: notice of opposition must be filed within two months of the date of first publication of application.
Duration – renewals: ten years from the filing date, renewable for like periods.
Grace period for paying the renewal fee: maximum six months with surcharge.
Use: not necessary for registration. Registration can be based on intended use. The court has the jurisdiction to remove any trademark from the Register on the ground that, up to one month prior to filing the request the mark had, after its registration, not been used by the registered owner or licensee during a continuous period of three years or longer.
Assignment: must be recorded.
Licenses: the registered proprietor of a trademark has the exclusive right to grant licenses. The Act makes provisions for recording licenses.
Infringement: injunctions, damages, seizure, fines or imprisonment are provided for.