Basic Conditions for Trademark in the Dominican Republic
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Since the protector and tutelary nature and other related-rights granted by registered marks to their holders, is logical to think to enjoy their prerogatives is needed to comply with several objectives requirements, that is, the mark must have several formalities to be admitted as such.
Validity conditions are divided into three main groups: The objectives or basics, subjective or related to shape and negative or concerning to legality. Obviously the first group is the most important and we shall refer to in this article. Such group is sub-¬‐ classified as: Significant, distinctive and innovative or availability conditions. Some authors as David Rangel adds further elements as specialty, legality and veracity but in my opinion those are supplementary requirements to those above indicated.
Significant Quality
It is the most abstract and broader spectrum of the qualities. From the ground of the significant quality it is inferred the necessity the mark complies a function in the market where it is applied, which is basically to identify and individualize the product. Even more, the mark must transmit in an assertive way the product message and such message once must influence the conscience of the final target: The consumer. A mark which does not achieve this objective has not a meaning.
By exampling this criterion, it worth to say the mark signs reach their full sense within a universe populated by other signs, in mark field, a company that manufactures all products and shall render all grantable products and shall market them under a sole mark shall not be interested to register them, nor the sign shall be used to provide information to consumer.
Distinctive Quality
Unquestionably the potential of the mark to be singularized and differentiated is the basic and own element of its nature. It is the condition to determine to be sufficiently original and special to draw the attention of the purchaser.
Only when the mark is special it complies with its mission to distinguish products and services to not be mistaken, individualizing, particularizing and witnessing their origin and source.
The distinctive condition or specialty implies the mark is not confounded with other and can be easily recognized. Thus, the specialty also means the mark is not to be so simple that spoils its role to attract the attention to consumers.
From another point of view, it worth to mention the mark is special due it is only applied the product category to which was created for.
The distinctiveness condition implies that the sign chosen does not refer in a general, needed and descriptive way to the product which must to differentiate. Indeed the generic description of the product is this being at odds with the mark identification function.
According with our opinion this criterion shall not be taken into account in the strictest sense, due it is logical to think one of the mark function is to bring to the understanding and conscience of consumer a clear perception of product which identifies. Therefore, the doctrine allows certain degree of evocativeness of the mark.
Law 20, year 2000, on industrial property reads in Article 73, letters (c), (d) and (f), as follows:
Art. 73. Not admissible marks due to grounds intrinsic to sign.
1. A sign cannot be registered as a mark when affected by the following prohibitions:
c) Which only consists in a sign or indication that could be used in the market to qualify or describe certain product or service characteristics;
d) Which only consist in a sign or indication, that in usual language or commercial usage in the country, be a generic designation, common or usual of similar or analogues products or services;
f) Which have not enough distinctive aptitude in connection with products or services to which is applied to, as to differentiate them from analogue or similar products.
From legal provisions above it can be proven that our legislation does not admit as trademarks the signs used to “qualify or describe certain characteristic of a relevant product or service. To our understanding the scope of such prohibition is excessive and in certain manner away from practical reality, since traditionally the national and international mark authorities have admitted as marks several signs that describe and evoke some characteristics of the product, as in the following cases: “Pan American” and “ American Airline”, to designate the air transportation among American countries, “Air Europa” for air transportation in European countries, “Crediya” and ̈Prestapronto”, words in Spanish in reference to money loan financial services to be disbursed in a short time.
It worth it to point out the prohibitions set forth in letters c, d, and f in number 1 of Article 73 of our industrial property Act in number 2 same article is provided that is possible to admit signs as a mark, on which is proven that “due to an frequent use in the country of the mark, same has acquired in commercial means and in the public enough distinctive character to award protection as a mark in connection with products and services to which it is applied”. This legal provision tends to alleviate the scope of such prohibitions.
I consider the transcendent and important matter it is not if the mark describes the products, but to determine if it has enough elements to differentiate it from similar products or services; is obvious that such criterion enters into a subjective appreciation.
As stated by David Rangel Medina “the appreciation of distinctive character of mark is a matter of fact ...and legislation provides general rules to be considered to qualify the concurrence or lack of this marks basic requirement”.
Innovation
The innovation, also known as availability, implies the sign is not registered or it use is not generalized in connection with the products to be protected as its usual or generic denomination, due is not the sign by itself that must be innovative but its application.
At first, signs can only be distinctive as they have been used or registered; on the contrary they shall not comply their basic function and y their use shall give rise to confusions. Those rules have their exceptions for mark renewals, registry cancellation by abandon or lack of use, being both situations provided in our mark legislation, in Articles 82 and 93 respectively.
For renewal as either for mark cancellation, it can be issued a new mark registry; in this case the sign has been used and disseminated in the market, so evidently the innovation has gone.
As stated by a the Brazilian author, Magalhaes “it is not necessary the mark being new by itself; is enough that in its application, to wit, has not being used for characterizing products or merchandises from other industries, companies or establishment”.
Concerning the Mexican legislation and the innovation requirement, David Rangel Medina says as follows: ̈The innovation requirement is expressly set forth by Mexican laws when they prohibit to admit as a registry or a mark these being equal or seems like to other previously registered, which taken together or having into account the reserved elements could be confounded; such prohibition means the identity or similarity of goods in a hand and in the other hand the identity or similarity between two marks, either when this similarity is evident as when is doubtful.
The innovation requirement in our country is set forth in letters j, k, l number 1 of article of industrial property Act, which indicates a symbol is considered as a mark when it is new in the market and not from or the product of or resulting from the reproduction or imitation of other already registered or not.
AUTHOR: Rodolfo Mesa Chavez
Copyright Mesa & Mesa Law Firm
More information about Mesa & Mesa Law Firm
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
Significant Quality
It is the most abstract and broader spectrum of the qualities. From the ground of the significant quality it is inferred the necessity the mark complies a function in the market where it is applied, which is basically to identify and individualize the product. Even more, the mark must transmit in an assertive way the product message and such message once must influence the conscience of the final target: The consumer. A mark which does not achieve this objective has not a meaning.
By exampling this criterion, it worth to say the mark signs reach their full sense within a universe populated by other signs, in mark field, a company that manufactures all products and shall render all grantable products and shall market them under a sole mark shall not be interested to register them, nor the sign shall be used to provide information to consumer.
Distinctive Quality
Unquestionably the potential of the mark to be singularized and differentiated is the basic and own element of its nature. It is the condition to determine to be sufficiently original and special to draw the attention of the purchaser.
Only when the mark is special it complies with its mission to distinguish products and services to not be mistaken, individualizing, particularizing and witnessing their origin and source.
The distinctive condition or specialty implies the mark is not confounded with other and can be easily recognized. Thus, the specialty also means the mark is not to be so simple that spoils its role to attract the attention to consumers.
From another point of view, it worth to mention the mark is special due it is only applied the product category to which was created for.
The distinctiveness condition implies that the sign chosen does not refer in a general, needed and descriptive way to the product which must to differentiate. Indeed the generic description of the product is this being at odds with the mark identification function.
According with our opinion this criterion shall not be taken into account in the strictest sense, due it is logical to think one of the mark function is to bring to the understanding and conscience of consumer a clear perception of product which identifies. Therefore, the doctrine allows certain degree of evocativeness of the mark.
Law 20, year 2000, on industrial property reads in Article 73, letters (c), (d) and (f), as follows:
Art. 73. Not admissible marks due to grounds intrinsic to sign.
1. A sign cannot be registered as a mark when affected by the following prohibitions:
c) Which only consists in a sign or indication that could be used in the market to qualify or describe certain product or service characteristics;
d) Which only consist in a sign or indication, that in usual language or commercial usage in the country, be a generic designation, common or usual of similar or analogues products or services;
f) Which have not enough distinctive aptitude in connection with products or services to which is applied to, as to differentiate them from analogue or similar products.
From legal provisions above it can be proven that our legislation does not admit as trademarks the signs used to “qualify or describe certain characteristic of a relevant product or service. To our understanding the scope of such prohibition is excessive and in certain manner away from practical reality, since traditionally the national and international mark authorities have admitted as marks several signs that describe and evoke some characteristics of the product, as in the following cases: “Pan American” and “ American Airline”, to designate the air transportation among American countries, “Air Europa” for air transportation in European countries, “Crediya” and ̈Prestapronto”, words in Spanish in reference to money loan financial services to be disbursed in a short time.
It worth it to point out the prohibitions set forth in letters c, d, and f in number 1 of Article 73 of our industrial property Act in number 2 same article is provided that is possible to admit signs as a mark, on which is proven that “due to an frequent use in the country of the mark, same has acquired in commercial means and in the public enough distinctive character to award protection as a mark in connection with products and services to which it is applied”. This legal provision tends to alleviate the scope of such prohibitions.
I consider the transcendent and important matter it is not if the mark describes the products, but to determine if it has enough elements to differentiate it from similar products or services; is obvious that such criterion enters into a subjective appreciation.
As stated by David Rangel Medina “the appreciation of distinctive character of mark is a matter of fact ...and legislation provides general rules to be considered to qualify the concurrence or lack of this marks basic requirement”.
Innovation
The innovation, also known as availability, implies the sign is not registered or it use is not generalized in connection with the products to be protected as its usual or generic denomination, due is not the sign by itself that must be innovative but its application.
At first, signs can only be distinctive as they have been used or registered; on the contrary they shall not comply their basic function and y their use shall give rise to confusions. Those rules have their exceptions for mark renewals, registry cancellation by abandon or lack of use, being both situations provided in our mark legislation, in Articles 82 and 93 respectively.
For renewal as either for mark cancellation, it can be issued a new mark registry; in this case the sign has been used and disseminated in the market, so evidently the innovation has gone.
As stated by a the Brazilian author, Magalhaes “it is not necessary the mark being new by itself; is enough that in its application, to wit, has not being used for characterizing products or merchandises from other industries, companies or establishment”.
Concerning the Mexican legislation and the innovation requirement, David Rangel Medina says as follows: ̈The innovation requirement is expressly set forth by Mexican laws when they prohibit to admit as a registry or a mark these being equal or seems like to other previously registered, which taken together or having into account the reserved elements could be confounded; such prohibition means the identity or similarity of goods in a hand and in the other hand the identity or similarity between two marks, either when this similarity is evident as when is doubtful.
The innovation requirement in our country is set forth in letters j, k, l number 1 of article of industrial property Act, which indicates a symbol is considered as a mark when it is new in the market and not from or the product of or resulting from the reproduction or imitation of other already registered or not.
AUTHOR: Rodolfo Mesa Chavez
Copyright Mesa & Mesa Law Firm
More information about Mesa & Mesa Law Firm
View all articles published by Mesa & Mesa Law Firm
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
