"Justice must not only be done, but must also be seen to be done", said Lord Hewart, in the case of Rex v. Sussex Justices, [1924] 1 KB 256. Since then, we strive to see justice, whenever a decision is rendered. Unfortunately, in some cases although the law is followed, justice is not apparent.

In a recent trademark opposition matter before the Dominican Republic Department of Distinctive Signs (ONAPI), a decision was rendered which not just fulfilled all criterions of justice but also made it very apparent. The Audiri Vox team being the global portfolio manager of the Opponent, assisted in the instant opposition proceedings.

Brief facts of the case are as follows:

  • The opposed mark was confusingly similar to the Opponent's trademark and wholly incorporated the source identifier belonging to the Opponent.
  • An opposition was filed on grounds of worldwide registrations belonging to the Opponent and bad faith of the Applicant.
  • Opponent's trademark was neither filed/registered nor used in the Dominican Republic prior to the filing of Applicant's trademark application.

The threshold of establishing well-known status of a trademark is relatively high, when prior rights, either through use or filing, cannot be established in the concerned jurisdiction. Accordingly, a trademark registered in several foreign countries but not known to the consumers in the jurisdiction under question, usually does not guarantee success in an opposition. Likewise, bad faith ground in opposition matters is either not available and if available, the criterion of establishing bad faith is extremely high.

In the instant matter, despite that the trademark on the basis of which the opposition was filed was registered in several countries around the world, it had never been filed or used in the Dominican Republic by the Opponent and hence establishing its well-known status was not easy. Thus, emphasis was laid upon strengthening the bad faith ground. While conducting research it was revealed that the applicant had previously filed several applications for famous marks belonging to third parties which were opposed by the respective rights holders. This established that the applicant is a habitual and notorious infringer. In addition, evidence was submitted confirming that the Applicant had filed a number of applications for the same mark in other countries which were opposed by the Opponent prior to filing the application in the Dominican Republic. This confirmed knowledge of Opponent's rights by the Applicant at the time of filing the application.  

The ONAPI after reviewing the arguments and evidence submitted by both the parties issued the decision in favor of the Opponent. The main grounds on which the decision was rendered are as follows:

-   It appears from the evidence submitted by the Opponent that at the time of filing the application for the contested trademark, the applicant was already aware of the existence of Opponent's rights, registered in several countries internationally.

-  Although IP rights are territorial and protection afforded to a registration is limited exclusively to the jurisdiction in which it was granted, it is no less true that the opposing party's trademark is registered in a large number of countries, destined to protect the same products consigned in the questioned application for registration.

-   What is important to highlight in the present case is that when consulting the Trademark Office's database, this Directorate has been able to verify that the applicant has repeatedly filed applications for trademarks registered in favor of third parties at an international level. Those parties also filed oppositions based on the same grounds as the instant opposition. In this sense, even when the records issued in jurisdictions other than ours are not admissible before this Office, the truth is that through repeated requests made by the applicant to register third party marks, a questionable intention on its part is established. Since it is not possible to attribute similarity of the applied marks with signs registered abroad to be a mere coincidence, applicant's malafide is apparent.

Linking prior knowledge with past conduct in unrelated matters to establish bad faith and its appreciation by the  ONAPI is commendable. The decision not just fulfilled the criterions of justice but also established that there is no place for habitual infringers on the trademarks Register.

A copy of the detailed decision can be obtained through writing to us.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.