Learn More about Trade Marks and Service Marks

By: Caribbean Offshore Services  09-12-2011
Keywords: trade marks, Service Marks

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Learn More about Trade Marks and Service Marks

Procedures and Documents for Filing of Trade or Service marks in Dominica

  1. 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.
  2. The following documents must be presented when filing a trademark application:
    1. 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.
    2. 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.
    3. 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.
    4. 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.
    5. 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 documents.

    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.

  3. 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.

  4. 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 be paid.

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 considers appropriate.

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:

  1. 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;
  2. 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;
  3. an uncertified certificate of transfer in Form 9 and signed by both registered owner and the new owner; or
  4. 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 authority.

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.

Other applications

Form 2 can be used for other matters where no specific form is provided.

Government fees

Our professional fees

Keywords: Service Marks, trade marks

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