The “Marks, Collective Marks and Trade Names Act of 1999” came into force in Dominica on February 1, 2009, according to a press release by Lysaght & Co.
According to a press release by Abu-Ghazaleh Intellectual Property (AGIP), this new Act abolishes the dual system of local applications, and those based on existing UK marks.
The final deadline by which granted UK marks can be registered in Dominica will expire on February 1, 2010 - one year from the date of entry into force of the new legislation.
The transitional provisions of the new Act provide that any person who is the owner of a trademark registered, or applied for, in the United Kingdom may, within 12 months of the entry into force of the new Act, file an application for registration of the same trademark under the new Act.
Previous Acts are repealed; however, existing registrations shall remain in force for the unexpired portion of their existing term and may be renewed under the provisions of the new Act.
Some points of particular significance are as follows:
• The new Act reduces the initial validity period from 14 years to 10 years, calculated from the date of application. Subsequent renewals will also be granted for consecutive periods of 10 years.
• The IP Officer and the Registry have advised that all pending UK and non-UK based applications that were filed under the old Act (prior to February 1, 2009) but published and/or registered on or after February 1, 2009 are considered to have been granted under the new Act and will be granted for an initial validity period of 10 years from the application date.
• It is now possible to claim Paris Convention priority.
• The International Classification of Goods and Services (9th Edition) has been adopted. The filing of multi-class applications is permitted.
• Existing national registrations must be re-classified upon renewal.
• Non-use of a mark for any continuous period of three (3) years following registration renders it vulnerable to cancellation on the grounds of non-use.
• A Trademark License Agreement must be recorded to be effective against third parties.
• License Agreement must provide for quality control, by the licensor, of the quality of the goods or services. Where a license agreement does not provide for such quality control, or if quality control is not effectively carried out, the license agreement will be considered invalid.
• Collective marks can be registered. A copy of the regulations governing the use of the collective mark must accompany the application.
• A collective mark may not be the subject of a License Agreement.
SOURCE:AGIPNEWS
