What is a trade mark?
A trade mark is the visible sign used to distinguish the goods (“trade mark”) or services (“service Mark”) of an enterprise. A trade mark may consist of words, designs, letters, pictures, numbers, packaging, slogans, devices or any combination of these. And a “Collective mark” is any visible sign used by a group or association of enterprises, which distinguish the origin or other common characteristics, including the quality, of goods or services of the members of the group or association. The collective mark is used to distinguish particular features of the product for which the collective mark is used.
A trade mark must be distinctive and must not be deceptive. A trade mark is not distinctive if it is deceptive. It is descriptive if it describes the nature or identity of the goods or services from which it is used. A trade mark must not claim a quality for the goods that they do not have.
Trade mark, once registered, provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services or to authorise others to use it in return for payment.
How to apply to register your trade mark
An applicant who residence or principal place of business is outside Dominica must be represented by a legal practitioner resident and practising in Dominica.
You may apply for the registration of a trade mark by filing at CIPO:
- Form 1, Application for the Registration of a Mark, Schedule II of the Marks, Collective Marks and Trade Names Regulation, S.R.O. No. 3 of 2009: The form must be accompanied by:
- An authorization of agent for applicants whose residence or principle place of business is outside Dominica or for a resident applicant who is applying through a legal practitioner.
- The prescribed fee as follows:
- XC$450.00 for goods or services in a single class, for each additional class XC$200.00
- XC$100.00 per class for a word mark or XC$150 per class, for a mark which has words and figurative elements, for publication of the application.
The Application must contain:
- A request that the mark be registered;
- A reproduction of the mark; and
- A list of the goods or services for which registration of the mark is requested, listed under the applicable class or classes of the International Classification of Goods and Services
See Schedule III, Marks, Collective Marks and Trade Names Regulation, S.R.O No. 3 of 2009 for the class headings of goods and services in the International Classification. For the alphabetic list of goods and services and explanatory notes of the International classification consult the Tenth Edition of the Nice Classification at www.wipo.int/classification/nivilo/
An accepted application is published in the Journal of Intellectual Property. Any person wishing to oppose the registration of the mark may within two months of the publication of a trade mark give notice by filing a Notice of Opposition in Form 3 accompanied by the Notice of Opposition fee of XC$150.00.
The Grounds for Opposition
The grounds for refusing or opposing a trade mark registration is as listed in Section 4 of the Marks, Collective Marks and Trade Names Act Section 4 and Regulation 11 of the Marks, Collective Marks and Trade Names Regulation.
Answer to Notice of Opposition
An applicant who wishes to answer the notice of opposition shall within one month from the date of receipt of the Notice of Opposition file in duplicate a Notice of Answer in Form 3 with the fee of XC$100.00. After the expiration of two months from the date of advertisement in the Journal of Intellectual Property and where the requirements for the registration of a mark is fulfilled and registration of the mark has not been opposed within the time limit or the opposition to registration of the mark has been decided in the applicants favour the mark will be registered as of the date of receipt of the application.
Duration of Registration
The registration of the mark shall expire ten years from the filing date of the application for registration but may be renewed for consecutive periods of ten year.
Renewal of Registration
A registered owner of a mark may any time within six months of the expiration of the registration of a mark make an application for the renewal of the registration of the mark by filing in Form 5 and the renewal fee as follows:
- XC$450.00 in respect of goods or services in a single class, for each additional class $200.00.
- XC$100.00 for publication of application for renewal.
- XC$250.00 additional fee payable within six months of the date of expiration
- XC$250.00 additional fee for restoration of mark removed for non-payment of renewal fees.
Transfer or assignment of a trade mark
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 have the assignment or transfer recorded in the Register. The fee filing fee is XC$150.00 for each mark and XC$100.00 for publication of application. The application must be accompanied by one of the following:
- a copy of the contract;
- a certified extract of the contract showing the change in ownership;
- 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.
Recording or cancellation of a licence
If a licence has been granted in respect of a registered mark the registered owner of the mark or the person to whom the licence has been granted shall apply, in Form 7, to have the licence recorded. The filing fee is XC$100.00 per mark and XC$100.00 for publication of application.
The application shall be accompanied by-
- A certified extract of the licence contract; or
- An uncertified statement of licence in Form 11.
A registered owner of a mark or a licensee whose licence is respect of a mark has been recorded may apply for the variation or cancellation of the record, in Form 7. The filing fee is ECS100.00 per mark and XC$100.00 for publication of application.
NOTE: A licence contract shall have no effect against third parties unless it has been recorded.
Recording a change of name, address or other amendment to a registered trade mark
To apply for the recording of a change of name, address or other amendment to a registered trade mark use Form 2. See fees, schedule 1 for applicable fees.
For all legal requirement and procedures please consult the Marks, collective Marks and Trade Names Act, No. 12 of 1999 and the Marks, Collective and Trade Names Regulation, S.R.O. No. 3 of 2009.