WHAT HAPPENS IF I DON’T USE MY BRAND OR TRADE NAME?

If you’ve already registered your trademark and/or your trade name, don’t think that’s enough; now you have to use them. It might seem obvious, because why would I register it if I’m not going to use it? But there are those who seek to have a distinctive sign “saved” and proceed with its  registration without any intention of using it immediately, and there are also those who pause projects for indefinite periods of time. However, this is not the best option because, believe it or not, if you stop using your trademark for an uninterrupted period of three years, or in the case of trade names, five years, they can be canceled at the request of an interested party if there is no justified cause for the lack of use.

But, how do I “use” my trademark? According to Law 20-00 of Industrial Property of the Dominican Republic, a trademark is considered in use when its products and/or services are placed in commerce or are available in the national market. In other words, having an Instagram account is not enough; the products and/or services that the trademark distinguishes must be actively marketed in the Dominican Republic.

To confirm if a trademark and/or a trade name are being properly used, the National Office of Industrial Property offers a service called “use inspection.” As its name implies, this service investigates the use of a distinctive sign within the country, thus confirming whether it would be possible to proceed with cancellation due to non-use or abandonment.

In the case of trade names, at the time of renewal (that is, 10 years after registration), evidence of use must be provided. This can include photos of the products distributed under this trade name, invoices issued to and by this commercial entity, among others, which can truly demonstrate that this trade name has not been abandoned. This is not a requirement for trademarks.

Finally, it is important to mention that the cancellation due to non-use of a trademark must be requested by a third party. This request would not be successful until three years have elapsed since the date of registration of the trademark. Likewise, cancellation will not proceed if there are justified reasons for the lack of use.

If you have been notified of a cancellation due to non-use or if you need to file such an action, Innventiva is here for you. You can write to us at info@innventivalegal.com