Trademarks Registration

Welcome to our trade marks and patent registration service. We, along with our locally affiliated law firm, provide a responsiveness, professionalism and efficiency which is unequalled by other service providers in Dominica. As a result, we have built up an enviable international clientele while maintaining the personal dedication and attention which all clients desire.

General Details

Trademarks And Service Marks Registration

The Marks, Collective Marks and Trade Names Act 1999 went into force on February 10, 2009. In addition to trade mark registrations, service marks can now be registered under the Nice Classification, and Paris Convention priority is now available. New registrations are for a term of 10 years, with renewals for consecutive periods of 10 years.

The new Act protects existing United Kingdom based and local registrations under the old Acts for the full remainder of their terms (14 years for local registrations).

Our trademark registration services include:

  • Advice on the registrability and retention of trademarks
  • Trademark searches
  • Filing of applications
  • Provision of legal advice
  • Payment of the relevant Government fees
  • Opposing the registration of trade marks
  • Litigation

Please contact us for further information.

Procedures & Documents

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 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.

Registration

  1. The applicant should complete and sign the Authorization of Agent form in the presence of a witness.  The witness is required to complete the Affidavit of Due Execution and the witness should sign the Affidavit of Due Execution in the presence of a Notary Public.
  1. The application (Form 1) shall contain information:
  •          allowing the identity of the applicant to be established;
  •          allowing the applicant or its representative, if any, to be contacted by the Registrar;
  •          stating the mark is being used or a declaration of intention to use the mark;
  •          stating the name of the country of which the applicant is a national or resident.
  1. If mark is represented by logo, design, or label, ten additional copies of the representation should be filed. The size of the mark should not exceed 8.5cm x 10cm.
  1. If a foreign word or symbol is being used as a trade mark, it should be translated in English. It is important to note that if the English version of the foreign mark has already been registered, the foreign mark cannot be registered.
  1. If the applicant wishes to claim colour as a distinctive feature of the mark, the applicant must also indicate the name or code of the colour claimed and an indication, in respect of each colour, of the principal parts of the mark which are in that colour.
  1. Priority filing (if applicable): An applicant for registration of a mark who claims priority of an earlier application, by reason of an application made in or for a State party to the Convention or a member of the World Trade Organization shall, within three months of the date of the application in Dominica, file with the Registrar a copy of the application upon which the claim of priority is based duly certified, to the satisfaction of the Registrar, by the Trade Marks Office of that State.

 

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

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.

Fees
All fees are quoted in USD.

  • Registration of Trade Mark in one class: $168.54
  • Registration of series of Trade Marks in one class
    1. For the first Mark: $168.54
    2. For every other Mark: $74.91
  • Registration of Trade Marks in respect of goods on different classes
    1. For the first class: $168.54
    2. For every other class: $74.91
  • Application, notifications or request to the Registrar
    1. Request for publicationNotice of new application
      • Word mark (per class): $37.45
      • Combined mark/figurative element (per class): $56.18
      • Notice of any other application: $37.45
    2. Request for statement of a decision: $37.45
    3. On application for alteration of address or address for service for each entry: $37.45
    4. On application for correction of clerical error or for permission to amend application or document: $37.45
    5. On application to enter change of name or description of applicant registered owner or Registered licensee for each mark: $56.18
    6. On application to amend or cancel entry on Register for each Mark: $37.45
    7. Request to strike out goods/services for each mark: $37.45
    8. Request to enter disclaimer for each Mark: $37.45
    9. Request to search for each mark per class: $18.73
    10. Request for information (CAVEAT) as to future proceeding for each mark: $18.73
    11. Application for the certificate of the Registrar with reference to the proposed assignment of a collective mark: $37.45
    12. Application for certificate: $74.91
    13. Any other applications, notifications or request not provided for: $37.45
  • For notice of opposition: $56.18
  • For notice of answer to opposition: $37.45
  • On application for renewal of registration of a mark
    1. For the first class: $168.54
    2. For every other class: $74.91

    Additional fee within six months of the date of expiration: $93.64

    Additional fee for restoration of mark removed for non-payment of renewal fees: $93.64

  • On application to record a transaction affecting the rights in a mark -Transmission, hypothecation or attachment:
    1. For first mark: $37.45
    2. For each additional mark: $37.45
    3. Stamp duty/Stamp: $26.03
    4. Penalties for late registration of cession/transmission of a registered mark – for each period of 12 months or portion thereof: $37.45
  • On application for
    1. recording a licence (per mark): $37.45
    2. variation of the record of licence (per mark): $37.45
    3. cancellation of a record of a licence (per mark): $26.22
  • For leave to make copies of documents in respect of an application or registration (per page): $2.63
  • For inspecting register, file or document: $9.37
  • For photocopy of any document, per page: $2.63
  • For certification of extracts from Register or Documents (per document): $18.73
  • Refund on withdrawal of any application: half of registration/recording fee (plus publication fee if application is unpublished)
  • Refund for excess fee (amount of excess less): $3.75
  • Extension of time: $56.18