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Learn More about Trade Marks and Service Marks
Procedures and Documents for Filing of Trade or Service marks in Dominica
- Before filing a trademark application in Dominica it is advisable but not
necessary to perform a search with the Dominican Intellectual Property Office in
order to verify if there is any prior application/registration for an identical or
confusingly similar trademark on behalf of another party. If a prior search is not
carried out, it will be done upon examination by the Intellectual Property Office.
- The following documents must be presented when filing a trademark application:
- Authorization of Agent. The Authorization of Agent
form should be signed before a witness and then the witness must sign
the Affidavit of Due Execution before a Notary.
- Form 1. Insert representation of mark on Form 1.
Margins should be 1 inch on each side and no information should be
placed at the back of the page.
- If mark is represented by logo, design, or label, six additional copies of the
representation should be filed. The size of the mark should not exceed
8.5cm x 10cm.
- Colour Claim: The appropriate notation (that is the name of the colour)
should be inserted in the space provided on Form 1. Also indicate what
part of the mark the colour claimed pertains to.
- Priority Certificate (if applicable). The appropriate notation should be
made in the space provided on Form 1. A certified copy of the registration
where priority is claimed should be submitted together with the registration
Please note that foreign words or symbols being used as trade marks should be
translated in English. The English version should be endorsed on Form 1. It is
important to note that if the English version of the foreign mark has already been
registered, the foreign mark cannot be registered.
Once the application has been filed, a formal examination will be undertaken by
the Intellectual Property Office wherein verifications will be done in relation to the
filing of the all the necessary documents and the payment of the appropriate fees.
The application is then published in the monthly Journal for opposition purposes.
A person who wishes to oppose an application for the registration of a mark
shall, within two months from the date of first publication of the application,
inform the Registrar of his opposition by filing a Notice of Opposition in Form 3
accompanied by the required opposition fee.
Registration is for the term of 10 years. A request for renewal should be made
not less than six months prior to the expiration of the existing registration. If the
request is not made before the expiry of the registration, the applicant can make
a further request within six months when the renewal, publication and late fee will
Trade Mark Renewals
A registered owner of a mark may at any time, not less than 6 months before the
expiration of the registration of a mark, make an application for renewal of registration in
Form 5 and shall, within that time, pay the fee for renewal of registration of the mark.
Where the owner of a mark fails to apply for renewal before the expiration of its
registration, the Registrar may grant him a further period not exceeding six months after
the expiration of the registration of the mark, within which he can renew registration by
paying the renewal fee and an additional late payment fee.
Where a registered mark is removed from the register due to a failure to pay the
renewal fee the Registrar may restore the mark to the register, on an application
made by the registered owner in Form 5 and on payment of the renewal fee and the
additional restoration fee within one year from the date of the removal of the mark from
the register, if the Registrar is satisfied that it is just to do so and on conditions as he
Recording Trade Mark Assignments & Mergers
Where the rights in a trade mark are assigned or transferred, the person to whom
the rights in the mark have been assigned or transferred shall apply in Form 6 to the
Registrar for a record of the assignment or transfer to be entered in the register.
An application shall be accompanied, at the option of the applicant, by one of the following:
- a copy of the contract, which copy the Registrar may require to be certified,
by a notary public or any other competent public authority, as being in
conformity with the original contract;
- an extract of the contract showing the change in ownership, which extract
the Registrar may require to be certified, by a notary public or any other
competent public authority, as being a true extract of the contract;
- an uncertified certificate of transfer in Form 9 and signed by both registered owner and the new owner; or
- an uncertified transfer document drawn in Form 10 and signed by both the registered owner and the new owner
Where a change in ownership results from a merger, the applicant shall indicate that
fact and attach a copy of a document from the competent authority as evidence of the
merger, and the copy shall be certified by the authority which issued the document or
by a notary public or any other competent public authority, as being in conformity with
the original document. An example of such a document is a copy of an extract from a
register of commerce.
Where the change of ownership does not result from a contract or merger but from
another ground, such as by operation of law or court decision, the applicant shall
indicate that fact and attach a copy of a document evidencing the change and the copy
shall be certified as being in conformity with the original document by the authority
which issued the document or by a notary public or any other competent public
Recording Trade Mark licences
If a licence has been granted in respect of a registered mark the registered owner of the
mark or the person to whom it has been licensed shall apply, in Form 7, to the Registrar
for the licence to be recorded.
The documents which are required to be filed in support of the application are:
- An extract of the licence contract indicating the parties and the rights being
licensed, certified by a notary public or any other competent public authority
as being a true extract of the contract; or
- An uncertified statement of licence in Form 11 set out in Schedule II, and
signed by both the registered owner and the licensee.
Variation or cancellation of record of licence
A registered owner of a mark or a licencee whose licence in respect of a mark has been
recorded may apply for the variation or cancellation of the record.
An application for the amendment or cancellation of a record of a licence in respect of
a registered mark shall be made in Form 7 and shall be accompanied by a statement of
the nature and scope of the variation or cancellation requested.
The documents to be filed in support of the application:
- Documents substantiating the requested variation or cancellation of the
recordal of the licence; or
- An uncertified statement of variation or cancellation of licence, Form 12 set
out in Schedule II, and signed by both the registered owner and the licensee.
Effect of failure to record licence or change in ownership
A licence contract or a change in ownership of a mark has no effect against a third party unless it is recorded.
Form 2 can be used for other matters where no specific form is provided.
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