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Trademark Registration in
Latin America:

Argentina

Bolivia

Brazil

Belize

Chile

Costa Rica

Colombia

El Salvador

Ecuador

French Guiana

Guatemala

Guyana

Honduras

Nicaragua

Mexico

Panama

Paraguay

Peru

Suriname

Uruguay

Venezuela

Contact us:

Email: info@proxario.netproxario@gmail.com

Head Office : Av. República de Colombia, Ciudad Real 2, M-D E-1 Office 101,
Santo Domingo 10605, Dominican Republic.

Tel: +212 (470) 8762 (English)

 
Puerto Rico

General trademark information of Puerto Rico

Registration is not required to establish rights in a trademark; sufficient prior use establishes rights in a trademark; this is a "first-to-use" jurisdiction. Rights in a trademark can also be acquired by registration based on the bona fide intention to use the mark in commerce. Thus, this jurisdiction combines the right born by use with the right constituted by registration. Use of an unregistered mark for any goods or services is legal. No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

A. Time Frame for Obtaining Registration

The approximate time from application to registration (for a regular prosecution, without opposition) is:
9 to 12 months.

B. Advantages of Registration

The benefits of registering a trademark include the following:

it provides prima facie evidence of ownership and validity;
it provides regional, national, and/or local protection;
it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark;
it helps to deter others from unlawfully using the trademark;
enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
it confers the ability to recover maximum monetary damages for infringement;
it provides a effective, cost-efficient remedy in the event the trademark is copied or pirated, which allows the registrant to secure an ex parte TRO and seizure order without bond.

II. Pre-Filing

A. Registrable Trademarks

The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:

words;
names;
devices;
certain three-dimensional shapes;
colors;
slogans;
sounds;
smells (olfactory trademarks);
trade dress/get-up;
holograms;
motion;
taste;
also: symbols; logos; designs; shapes; objects; medium; combinations of the above.

The special requirements for the registration of three-dimensional shapes are:
The applicant must submit a drawing that depicts the mark in a single rendition and state that the mark is three dimensional.
There are no special requirements for the registration of colors in the Trademark Act and regulations. However, a local attorney should be consulted because federal (U.S.) case law is considered persuasive, and special requirements may be applicable according to it.

The special requirements for the registration of sounds are:
The applicant does not have to submit a drawing of the mark. Instead, the applicant must describe in detail what the sound consists of.

The special requirements for the registration of smells are:
The applicant does not have to submit a drawing of the mark. Instead, the applicant must submit a detailed description of the mark.

The special requirements for the registration of trade dress are:
To be registrable, the trade dress cannot be functional.

There are no special requirements for the registration of holograms in the Trademark Act and regulations. However, a local attorney should be consulted because federal (U.S.) case law is considered persuasive, and special requirements may be applicable according to it.

The special requirements for the registration of motion are:
The applicant must submit a drawing showing up to five freeze frames showing various points in the movement in the manner that best depicts the commercial impression of the mark. The applicant must also describe the mark.

The special requirements for the registration of taste are:
The applicant does not have to submit a drawing of the mark. Instead, the applicant must submit a detailed description of the mark.

Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

In addition to regular trademark registrations, the following types of trademarks are registrable:

collective marks;
certification marks;
service marks.

Retail services are registrable provided that the nature of the retail services is clearly identified.

The following are not registrable as trademarks:

marks contrary to moral standards or public order
or law;
generic terms;
non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
marks that function principally as surnames,
unless secondary meaning is shown;

The flag, coat of arms, or other insignia, sign, or symbol of Puerto Rico or the United States or of its states, municipalities, territories, cities, as well as foreign municipalities, cities, or nations, or any imitation thereof;
a name, portrait, or signature identifying living individuals, except by their written consent;
surnames of living individuals only known by their surnames, absent their written consent;
words descriptive of the goods or services in which the mark is used, absent a showing of secondary meaning;
shape or packaging when the nature, shape, or packaging is essential to its function;
geographic names indicating the source or origin of the goods or services, absent secondary meaning;
deceptive geographic terms;
an identical or similar mark that causes likelihood of confusion as to the source of the goods or services of a registered mark or a mark that is used in commerce by another person and that is used or intended to be used on goods or services identical or similar to those of the registered mark or the mark previously used in commerce;
a mark identical or substantially similar to a famous or well-known mark of any country known to the relevant market in Puerto Rico, even if it is not used in Puerto Rico.

Geographical indications (GIs) are protected in this jurisdiction.
Geographical indications are protected in the same way geographic terms are protected by means of trademark laws.

GIs are protected by way of:
trademark laws, in the form of collective marks or certification marks;
special certification for coffee from Puerto Rico.

The following products or categories are subject to GI protection in this jurisdiction:

See answer above.

B. Searching

While conducting a private pre-filing search is not mandatory, it is recommended in that it can:

save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights;

disclose additional potentially conflicting trademarks, e.g., prior unregistered rights such as those gained at common law.

The national office is accessible online at the following URL:

 https://prtmfiling.f1hst.com

The official register can be searched online at the following URL:

 https://prtmfiling.f1hst.com

C. Use

An applicant benefits from pre-filing use of a trademark.

The benefits of pre-filing use are:

Use may demonstrate acquired distinctiveness (secondary meaning) and help to overcome an objection to an application to register the trademark on the ground of non-distinctiveness.

In general, the first person to use a mark has the ultimate right to such mark.

When a mark is not registered, use of that mark may provide the following benefits:

 Protection against infringement may be available by proving ownership and prior and superior rights to those of the infringing party.

Famous and/or well-known marks are protected via the following mechanism(s):

a determination by the court resulting from an action for infringement;

 by a prohibition in the law banning registration of marks that are identical or substantially similar to a famous or well-known mark of any country known to the relevant market in Puerto Rico, even if it is not used in Puerto Rico.

D. International Treaties

This jurisdiction is not a member of any international treaties relating to intellectual property.

III. Filing

A. Requirements

If the applicant is not domiciled in this jurisdiction, it is not necessary to provide a local address for service.

But foreign legal entities must prosecute registration through an attorney in good standing admitted to practice in Puerto Rico.

Joint applicants are permitted in this jurisdiction.

Either actual use or intent to use is required for application.

The following information is required to COMPLETE an application:

name and address of applicant

(as well as applicant's commercial denomination, if any, and the telephone number, fax number, and email address of the applicant or its representative);

state or country of incorporation

(if applicant is a legal person, and citizenship if applicant is a natural person);

description of trademark;

specimen of trademark (an actual article (or photograph of such article) showing a mark as used on or in connection with the goods or services claimed in an application or registration)

(for marks that are used in local commerce);

representation of trademark (a depiction of the mark an applicant seeks to register)

(The applicant must also identify the type of trademark, i.e., trademark, service mark, collective mark, or certification mark.);

list of goods/services

(as well as the international class to which the goods or services belong);

statement of use

(for marks that are used in local commerce. The applicant must provide the specific date of first use in local commerce, including day, month and year.);

proof of use;

 for marks that are used in local commerce, in the form of a specimen

dates of first use

(for marks that are used in local commerce, including day, month, and year);

statement of intention to use

(for applications based on the applicant's intent to use the mark in local commerce);

official filing fee;

 applicant's mailing address and, physical address of principal place of business if applicant is a legal entity;

mailing or physical address, telephone number, fax number and email address where applicant wishes to receive all communications/notices related to the application;

the applicant's signature or that of its representative;

a declaration under penalty of perjury.

Additional information must be provided for collective and certification marks.

While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:

name and address of applicant 

(While applicant's address is not necessary, an address that allows the local Trademark Office to contact the applicant or its representative is.);

representation of trademark (a depiction of the mark an applicant seeks to register);

list of goods/services;

official filing fee.

The list of goods and services in this jurisdiction may specify:

a list of names commonly used in the trade for the specific goods or services of interest.

The following number of copies of the trademark must be submitted:

one application filed electronically.

Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:

in response to an official request.

In this jurisdiction, the following types of registration are available:

local (e.g., state).

This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

No (other) multinational regional registrations are available in this jurisdiction.

Applications can be filed online at the following URL:

 https://prtmfiling.f1hst.com

The official file can be accessed online at the following URL:

 https://prtmfiling.f1hst.com

Applications are officially searched as to prior trademarks.

This takes between six and seven months approximately.

B. Priority

Priority cannot be claimed in this jurisdiction.

C. Classification

This jurisdiction uses the Nice Classification System.

If a trademark is or will be used in more than one class of goods and/or services, it is necessary to file a separate application for each class of goods and/or services.

D. Representation

An application to register a trademark may be filed directly in this jurisdiction by:

the applicant, even if not a citizen of or domiciled in the jurisdiction

(only if applicant is a natural person);

a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

 As to attorneys, bear in mind that only attorneys admitted to practice in Puerto Rico can file applications.

IV. Application

A. Publication

The filing particulars of an application are made available to the public.

The filing particulars are made available to the public:

through publication and online.

However, online information of old records may be incomplete and/or not completely updated.

The following application details are made available to the public:

mark

and type of mark;

name of applicant;

address of applicant;

state or country of incorporation of applicant;

citizenship of applicant;

application number;

application date;

goods/services;

date of first use;

representation of trademark

and description of the mark;

specimen(s) of use;

applicable international class;

colors to be protected;

disclaimers;

translation of elements of the mark not in Spanish or English;

filing date;

expiration date;

representative's name and contact information;

assignment and publication details;

opposition details;

copies of official documents.

B. Examination

Applications are examined in respect of:

formalities: i.e., for compliance with the filing requirements;

classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;

clarity: i.e., that descriptions are clear and understandable;

descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;

distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;

deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);

conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search.

If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:

The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.

This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

The order of the application process is as follows:

examination, publication, registration.

C. Prosecution

Accelerated examination may not be requested.

The following rights are established by a pending application:

the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;

the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application;

 gives notice of use or intention to use the mark.

D. Opposition

Opposition is available.

Opposition is conducted pre-grant;

 that is, after official evaluation but before the mark is registered.

The following can be grounds for opposition:

proprietary rights, such as an earlier conflicting registration;

the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;

the mark is not distinctive;

the mark is misleading, deceptive, or disparaging;

the mark is functional;

the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

the mark is against public policy or principles of morality;

 likelihood of confusion. There may be additional grounds. Hence, consulting with local trademark counsel is recommended.

An application is published for opposition purposes after formal examination of the application.

The opposition period begins on the following date:

Publication date.

The opposition period ends on the following date:

30 days following publication date. However, an extension of up to 20 additional days may be sought for good cause before expiration of the original term of 30 days.

The following parties may initiate an opposition:

 any person who considers that he or she is injured by the registration of a mark.

Oppositions can be filed online.

E. Proof of Use

Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance

 for intent to use trademark applications.

 

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

An application can be assigned.

A registration can be assigned.

An assignment of an application can be made for a portion of the territory covered by the application.

 The Trademark Act and the applicable rules and regulations are silent on the matter of whether an assignment of an application can be made for a portion of the territory covered by the application. Hence, a local trademark attorney should be consulted.

An assignment of a registration can be made for a portion of the territory covered by the registration.

The Trademark Act and the applicable rules and regulations are silent on the matter of whether an assignment of a registration can be made for a portion of the territory covered by the registration. Hence, a local trademark attorney should be consulted.

An assignment of an application can be for some or all of the goods or services listed in the application.

 The Trademark Act and the applicable rules and regulations are silent on the matter of whether an assignment of an application can be for some or all of the good or services listed in the application. Hence, a local trademark attorney should be consulted.

An assignment of a registration can be for some or all of the goods or services listed in the registration.

The Trademark Act and the applicable rules and regulations are silent on the matter of whether an assignment of a registration can be for some or all of the good or services listed in the registration. Hence, a local trademark attorney should be consulted.

Goodwill must be included in an assignment of an application.

The Trademark Act and the applicable rules and regulations are silent on the matter of whether goodwill must be included in an assignment of an application. Hence, a local trademark attorney should be consulted.

Goodwill must be included in an assignment of a registration.

The Trademark Act and the applicable rules and regulations are silent on the matter of whether goodwill must be included in an assignment of a registration. Hence, a local trademark attorney should be consulted.

An assignment document for an application requires:

name of assignor;

address of assignor;

citizenship of assignor;

name of assignee;

address of assignee;

citizenship of assignee;

details of the trademark being assigned

include trademark, filing number, and filing date;

effective date of the assignment;

signature by assignor;

nominal consideration (a specific nominal value is not necessary);

indication that goodwill is included.

While the Trademark Act and applicable rules allow assignment documents valid under the laws of the country in which it was executed and the only express requirement is that details of the trademark being assigned be included in the request to record the assignment, including the above information would be helpful. A local trademark attorney should be consulted.

An assignment document for a registration requires:

name of assignor;

address of assignor;

citizenship of assignor;

name of assignee;

address of assignee;

citizenship of assignee;

details of the trademark being assigned include trademark, registration number, and date of registration certificate; effective date of the assignment; signature by assignor; nominal consideration (a specific nominal value is not necessary).        

While the Trademark Act and applicable rules allow assignment documents valid under the laws of the country in which it was executed and the only express requirement is that details of the trademark being assigned be included in the request to record the assignment, including the above information would be helpful. A local trademark attorney should be consulted.

Legal verification of a written assignment document of an application is not required.

Legal verification of a written assignment document of a registration is not required.

An assignment of an application need not be recorded to be effective, but is advisable and will be required for the assignee to be able to file maintenance documents at the Puerto Rico Trademark Office, such as declarations of use, of continued use, and renewals.

An assignment of a registration need not be recorded to be effective, but it is advisable and will be required for the assignee to be able to file maintenance documents at the Puerto Rico Trademark Office, such as declarations of use, of continued use, and renewals.

 

B. Licensing

Use of a mark that is the subject of an application can be licensed.

Use of a registered mark can be licensed.

In this jurisdiction, recordation of a registered trademark user is an alternative means of registering the rights of another to use the mark.

A license of an application can be made for a portion of the territory covered by the application.

 The Trademark Act and the applicable rules and regulations are silent on the matter. Hence, a local trademark attorney should be consulted.

A license of a registration can be made for a portion of the territory covered by the registration.

The Trademark Act and the applicable rules and regulations are silent on the matter. Hence, a local trademark attorney should be consulted.

A license of an application can be for some or all of the goods or services listed in the application.

 The Trademark Act and the applicable rules and regulations are silent on the matter. Hence, a local trademark attorney should be consulted.

A license of a registration can be for some or all of the goods or services listed in the registration.

 The Trademark Act and the applicable rules and regulations are silent on the matter. Hence, a local trademark attorney should be consulted.

A license of an application can be exclusive (only one licensee, with the owner excluded).

A license of an application can be sole (only one licensee and the owner).

A license of an application can be non-exclusive (multiple licensees and the owner).

A license of a registration can be exclusive (only one licensee, with the owner excluded).

A license of a registration can be sole (only one licensee and the owner).

A license of a registration can be non-exclusive (multiple licensees and the owner).

Use by a related company of a mark that is the subject of an application need not be licensed.

 In any event, the Trademark Office can require any information or evidence it deems appropriate to confirm that use of a mark by a related company inures to the benefit of the applicant and does not affect the validity of the mark.

Use by a related company of a registered mark need not be licensed.

 In any event, the Trademark Office can require any information or evidence it deems appropriate to confirm that use of a mark by a related company inures to the benefit of the registrant and does not affect the validity of the mark.

A license of an application can be made with a time limitation.

A license of a registration can be made with or without a time limitation.

A license document for an application requires:

name of licensor;

address of licensor;

citizenship of licensor;

name of licensee;

address of licensee;

citizenship of licensee;

details of the trademark to be licensed;

goods and services being licensed;

commencement date of the license;

term of the license;

territory of the license;

quality control provisions;

signature by licensor;

signature by licensee;

express permission to sublicense, if appropriate.

The Trademark Act and applicable rules are silent on requirements for licensing documents. However, including the above information would be helpful. A local trademark attorney should be consulted.

A license document for a registration requires:

name of licensor;

address of licensor;

citizenship of licensor;

name of licensee;

address of licensee;

citizenship of licensee;

details of the trademark to be licensed;

goods and services being licensed;

commencement date of the license;

term of the license;

territory of the license;

quality control provisions;

simple signature by licensor (see below for execution requirements);

simple signature by licensee (see below for execution requirements).

 The Trademark Act and applicable rules are silent on requirements for licensing documents. However, including the above information would be helpful. A local trademark attorney should be consulted.

Legal verification of a written agreement to license an application is not required.

A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

A license of an application need not be recorded to be effective.

A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

A license of a registration need not be recorded.

The license for a renewed registration need not be re-recorded.

Legal verification of a written agreement to license a registration is not required.

C. Other Changes to Trademark Records

The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:

 For change of names, mergers, consolidations or any other similar change, a certification issued by the Secretary of State or other official who has the custody of the official registry in the jurisdiction, under whose laws the same were underwritten, or other documents that according to the laws of the country in which these were underwritten shall suffice to vouch for such change. All requests to record these changes must identify the trademark/s in question, the filing number (in case of an application) or the registration number (in case of registrations), the filing date (in case of applications), and the date of the certificate of registration (for registered marks). The corresponding filing fee must also be paid.

The requirements regarding the recordal of updated addresses on trademark records are as follows:

The are no formal requirements, other than payment of the corresponding filing fee.

The requirements for recording liens against trademark records, such as security interests, are as follows:

 The are no formal requirements, other than payment of the corresponding filing fee.

 

VI. Registration

Requirements

A fee is not required for issuance of the registration.

The following documentation is required for issuance of the registration:

none.

B. Rights

The following rights are established by registration:

the exclusive right to use the registered trademark

(However, a prior user can seek cancellation based on likelihood of confusion within five years of registration.);

the right to obtain damages for infringement

(While owners of nonregistered marks can seek damages, statutory damages are only available for owners of registered marks.);

 the right to invoke certain remedies.

The Roman alphabet is used to represent the official language(s) of this jurisdiction.

A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:

counting from the date of registration of the mark:

 five uninterrupted consecutive years.

The territorial limit of registration is:

Puerto Rico.

C. Term

The initial term of a registration is:

10 years.

The beginning of the term of a registration is calculated from:

the registration date,

which is the filing date.

D. Marking Requirements

Marking is not compulsory for registered trademarks, but is advisable because:

 it stands for additional notice of registration and hence, may deter possible infringing parties.

Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.

 MR or Marca Registrada.

The use of ® is not legally recognized, but it is recognized in practice.

It is allowed and recognized only for U.S. federal trademark registrations.

The legal consequences of false or misleading marking are:

Administrative fine of $500. Additional legal consequences could take place. Hence, consult a local trademark attorney.

 

VII. Post-Registration

A. Use Requirements

Attack on the ground of non-use is available.

To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

 For intent-to-use applications/registrations, a trademark must be used within three years of the filing/registration date or within the extension sought, which can be for a maximum of one year, with a showing of just cause. In addition, note that non-use for three consecutive years shall constitute rebuttable evidence of the intent to abandon the mark.

To satisfy the use requirement, the amount of use:

 must be good faith use in local commerce.

Use of the trademark must occur in:

this jurisdiction.

The consequences of a trademark's not being used are as follows:

Abandonment.

The following periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are required:

 for intent-to-use applications/registrations, use must be shown within three years of the filing/registration date. An extension of up to one year to begin use in commerce can be sought for good cause and must be requested before expiration of the original three-year term. Likewise, a Declaration of Continued Use with evidence of use (or a Declaration of excusable non-use) must be filed between the fifth and sixth year from filing/registration date. This requisite applies to all registrations. A Declaration of Use with evidence of use (or a Declaration of excusable non-use) must also be filed between the 9th and 10th year after filing/registration date with the renewal application, and with every subsequent renewal application.  

Statements or filings regarding use must be submitted on the following schedule:

See answer above.

An action for non-use of a trademark can be brought by:

any interested third party.

Non-use can be excused under the following circumstances:

 Although the trademark rules and regulations allow for filing a declaration of excusable non-use in certain cases, they are silent on the circumstances that constitute excusable non-use.

Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:

filed an application to register an identical or similar trademark;

registered an identical or similar trademark;

used an identical or similar trademark;

filed an action for cancellation of the trademark on the ground of non-use.

 A local trademark attorney should be consulted.

Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

Amendment of a registration to conform to a modified form of the trademark is possible. Consult a local trademark attorney.

B. Cancellation

Cancellation is available.

The following can be grounds for cancellation:

proprietary rights, such as an earlier conflicting registration;

the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;

the mark is not distinctive;

the mark is misleading, deceptive, or disparaging

 (or is used in a misleading manner);

the mark is functional;

the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

the mark is against public policy or principles of morality;

the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention

the mark is used in a misleading manner;

the mark is prohibited in this jurisdiction;

the application for or registration of the mark was made in bad faith;

the registration consists of or includes a name, portrait, or signature identifying a living natural person, except by his written consent;

the mark has been abandoned.

There may be additional grounds depending on the circumstances of each case. Consult a local trademark attorney.

There is a deadline for bringing a cancellation action.

 After five years of registration, a trademark may be canceled only on certain grounds.

The deadline for bringing a cancellation action is:

five years from filing/registration date for certain grounds.

The following parties may bring a cancellation action:

 any person who considers that he or she is injured by the registered mark may bring a cancellation action.

Cancellation actions can be filed online at the following URL:

 https://prtmfiling.f1hst.com

C. Renewal

The following documentation is required for renewal:

declaration of use;

proof of use

in the form of a specimen.

Acceptable proof of use/declaration of use documents are:

declaration from proprietor

which must identify the details of goods/services for which the mark has been used;

specimens or samples of the trademark as used.

The first renewal date of a registration is:

10 years from the application filing date,

 which is the same as the registration date.

Subsequent renewals last for the following period of time:

10 years from the renewal date of the registration.

The renewal pre-payment period is:

no more than the following number of months before the renewal date: 12.

There is a grace period for renewing registrations once the renewal date has expired.

The grace period after the renewal date has expired is:

6 months.

The penalty for late renewal is:

 payment of additional filing fee.

Renewal can be effected online at the following URL:

 https://prtmfiling.f1hst.com

At the completion of renewal, a new registration number is not issued.

 

VIII. Customs Recordation

A. Customs Recordation

 

There is no mechanism for recording trademarks that are registered in this jurisdiction with the customs authority.

 

IX. Domain Names

A. Domain Names

 

A domain name may be protected as a trademark only if the domain name is not merely a Web address but is used or intended to be used in connection with goods or services.

The following approved registrars can register a domain name in this jurisdiction:

https://domainr.com
https://www.dynadot.com/domain/pr.html
https://www.marcaria.com/ws/en/domains/puerto-rico-domain-registration-pr
https://web.pr

Availability of domain names in this jurisdiction can be searched through the following website(s):

 

https://www.marcaria.com/ws/en/domains/puerto-rico-domain-registration-pr

https://web.pr (among others).

The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

 

.pr

To obtain a domain name under the ccTLD in this jurisdiction, there are no requirements of locus with this jurisdiction, such as a local address or local business activity,

 

except for .edu.pr and .gov.pr

Domain name registrations can be assigned.

Domain name registrations can be licensed.

 

The regulations are silent on the matter. A local attorney should be consulted.

A domain name registration may be contested in this jurisdiction through the following mechanisms:

a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through an ICANN-approved domain-name dispute resolution service provider (see http://www.icann.org/en/help/dndr/udrp).

One may institute a UDRP proceeding with the following ICANN-approved domain-name dispute resolution service providers to contest a domain name registration in this jurisdiction:

World Intellectual Property Organization (WIPO).

If a registration lapses as a result of failure to renew, it can be revived or restored in the following way:

 Please note that information currently available does not specify whether a registration can be revived or restored once it lapses as a result of failure to renew.

The application to register a domain name as a trademark will be examined for conflicts with prior trademarks.

An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another only if the domain name is being used as a trademark in addition to being used as an address.

In general, the courts do not apply the same principles to domain name disputes as are applied to trademark disputes. The following unique considerations are of particular note:

Please consult a local attorney.

If you would like to know the trademark registration process of Saint Barthelemy ? Click on here!

WE OPERATE ACROSS THE CARIBBEAN, LATIN AMERICA AND AFRICA
We are active in all areas of prosecution, registration, and enforcement of intellectual property rights, and provide a full range of related legal and IP management services. Our head office of Dominican Republic provides IP services in the above regions through our widely established network of associate partners.

OUR JOB IS PROTECTING YOUR TRADEMARK

Enhancing Your IP Rights
Through A Full-Service IP Firm
 

   

 

 

Trademark Registration in Caribbean:

Anguilla

Antigua and Barbuda

Aruba

Bahamas

Barbados

Bermuda

BES Islands

British Virgin Islands

Caymans Islands

Cuba

Curacao

Dominica

Dominican Republic

Grenada

Guadeloupe

Haiti

Jamaica

Montserrat

Puerto Rico

Saint Barthelemy

Saint Kitts and Nevis

Saint Lucia

Saint Vincent and the Grenadines

Sint Maarten

Saint Martin

Trinidad and Tobago

Turks and Caicos Islands

U.S. Virgin Islands

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