Acts of confusion in the Dominican Republic: should you go right away to Court?

11月 2022

In the Dominican Republic, the use and registration of previously registered distinctive signs is sanctioned by two different regulatory bodies. The Law on the Defense of Competition No. 42-08 (LDC), which contains a chapter on Unfair Competition, and Law 20-00 on Industrial Property.

The legal definition contained in Article 11 of the LDC establishes a non-exhaustive list of acts that may be considered unfair, among those indicated in paragraph b) acts of confusion. The legal definition tries to establish a distinction between the confusion in a broad sense, which can occur between products, activities and commercial establishments and the confusion between signs protected by intellectual property rights; The close link between both legal concepts is indisputable.

Law 20-00 on Industrial Property also admits this legal figure to allow the holder of a registered distinctive sign to exclude third parties from the use of distinctive signs that are the same or similar to theirs. In terms of intellectual property, confusion is determined from two identical or similar trademarks that are aimed at differentiating the same products or services in the market, which would ultimately cause confusion among the consuming public that could not clearly distinguish between one or the other product.

In this situation, the Court of Justice of the Andean Community, when interpreting subparagraph a) of article 259 of Decision 486 of the Andean Community, has established the following: “The acts of unfair competition due to confusion do not refer properly to the analysis of confusion between the distinctive signs of the products of the competitors, since such a situation is sanctioned by a specific regime, but to the confusion that those acts could produce in the consumer in what concerns the establishment, the products or the economic activity of a certain competitor, preventing him from choosing properly, according to his needs and desires”.[1] This interpretation tries to distinguish between the confusion regarding intellectual property and the confusion in the unfair competition regime itself and to delimit both legal fields.

Returning to Dominican legislation, the Industrial Property Law offers resources to challenge the total or partial usurpation of registered signs, and the ONAPI (the Trademark and Patent Office of the Dominican Republic) follows certain criteria for admissibility of registration that goes through the analysis of the confusion between signs (and therefore of the risk of confusion), but it is the ordinary courts that will make it possible to compensate for the damages caused by these acts.

In these circumstances, resorting to the previous administrative channels (ONAPI or PROCOMPETENCIA), may result in a precedent that is counterproductive to the interests of the affected party and in higher costs associated with the requirements that must accompany said complaints. On occasions, therefore, it may be advisable to attack the unfair effects of the total or partial reproduction of the distinctive signs registered before the ordinary courts. Be that as it may, it is an issue that must be carefully analyzed before preparing the most convenient defense strategy for each client.

Elka Scheker, attorney-at-law, Dominican Republic, GIRO MARTINEZ.

Image: Rudy Corporan, on Unsplash

[1] Court of Justice of the Andean Community. Process No. 11-IP-2006. Preliminary Interpretation of April 11, 2006, p.16. Quoted by Karina Espinoza in her Article The act of confusion as an act of unfair competition and the risk of trademark confusion as an infringement of industrial property rights. Competition and Intellectual Property Magazine No. 5