04-12-2010 (Newsletter Issue 9/10)
New Trademark Proceedings
As per notification of January 25th last, The Dominica’s Registrar of Companies and Intellectual Property, has provided a list of items and proceedings that must be now officially published:
- New trademark applications filed
- Disclaimers made on trademarks (regarding common expressions, goods, generic voices, etc.)
- Granting a trademark registration
- Invalidation of trademark registration during a court proceeding
- Renewal and/or expiration of trademark registrations (be it the case)
- License agreements on trademarks
- Trademarks Assignments or changes of ownership
Dominica is an English common law jurisdiction, independent since 1978, and not to be confused with the Dominican Republic. Legal Basis of Dominica is the Marks, Collective Marks and Trade Names Act 1999, which was put into force on February 2nd, 2009.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition. It is the first to use rather than the first to register who has the superior right. Prior use, however is not required; an applicant only needs to declare an intent to use.
Nice classification, 9th edition
Registrable as a trademark are traditional types of trademarks, i.e. words, slogans and designs, but not aromas, etc.
The following trademark types are registrable: trade marks, service marks, collective marks and trade names.
The application is filed at the trade marks registry at Roseau, Dominica
Multi-class applications are possible.
Paris Convention Priority is available.
Foreign Applicants need a local agent.
A notarized power of attorney is necessary. General powers of attorney are not permitted by the registry. Every application requires a separate, signed authorization form, that identifies each mark's respective class(es) and goods or services.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
After formal examination and acceptance, the mark is published for opposition
The processing time from first filing to registration is approximately 18 months to two years.
Any applicant or owner of a UK registration may file an application to register the same mark in Dominica and thereby obtain the same filing/registration date in Dominica as for the UK mark, during the transition period which ends February 11, 2010.
The opposition period is two months from the date of publication of an application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from the filing date of application. It can be renewed for further periods of 10 years. Trademarks registered before February 2, 2009, keep their term of 14 years until their next renewal. Renewal of local registrations will involve re-classification from the old British to the International Classification system.
Late renewal may be applied for within 6 months of expiration. Another provision allows a further month for payment of the renewal fees.
Removal from the register for non-use can be sought by an interested third party, but only after three years of continuous non-use following registration, which may be forgiven in special circumstances and upon evidence that there was no intent to abandon or not use the mark.
Registration fee of a word mark is USD 206.00 (approx. EUR 148.00) in the first class and USD 111.00 (approx. EUR 80.00) in each additional class.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
Registration fee of a design mark is USD 222.00 (approx. EUR 160.00) in the first class and USD 130.00 (approx. EUR 93.00) in each additional class.
(Renewal - USD 168.00, Assignment - USD 63.00, Change of Name or Address - USD 38.00)
We would like to thank the following law firms for their assistance in updating the information provided: