ADOPI asks Supreme Court to resolve conflict of jurisdiction

Dominican Republic

The Dominican Association of Intellectual Property (ADOPI) has asked the Supreme Court to resolve a conflict of jurisdiction created by the interpretation of the 2010 Dominican Constitution. The reason for the request is that IP attorneys are worried at the prospect of losing judges who have become specialised in trademark cases.

All patent and trademark cases are decided by the National Office for Industrial Property (ONAPI), which has administrative jurisdiction. Internally there are two levels within ONAPI, one being the department directors (trademark or patent), and any appeal from a decision must be made by the director of the department in question.

The Dominican Industrial Property Law (20-00) specifically stipulates that, following an administrative decision by the director of ONAPI, the parties may take the case before the Civil and Commercial Court of Appeals of Santo Domingo. Before 2000, it was before a first-instance commercial judge.

The system had been working fine for 14 years. The fact that the practice had not changed for a fairly long period of time meant that the judges at the Court of Appeals had become specialised in industrial property matters, as it was mandatory for them to review ONAPI decisions.

In 2010 the Dominican Republic enacted a new Constitution, which includes provisions stipulating that any decision in a conflict between a person and a government administrative office shall be reviewed by the Superior Administrative Court (Articles 164 and 165 of the Constitution).

Since 2014, the Court of Appeals has interpreted those provisions as indicating that all decisions by ONAPI must be considered as “administrative decisions” and, consequently, the Court of Appeals cannot review them. The decisions must thus be appealed to the Superior Administrative Court, whether the litigation is between two private parties (eg, trademark opposition or cancellation proceedings) or between a private petitioner and ONAPI. 

However, the Superior Administrative Court interpreted the new Constitution differently and declined to hear the cases, considering that Law 20-00 specifically stated that the Court of Appeals is the competent court to review ONAPI decisions.

Faced with such conflicting interpretations, IP legal counsel found themselves without any means to appeal ONAPI decisions, and the Court of Appeals decided to return to the Law 20-00 principles.

The problem resurfaced when a Supreme Court decision abrogated the article of Law 20-00 that indicated that all final ONAPI resolutions may be appealed to the Civil and Commercial Court of Appeals in Santo Domingo.

ADOPI thus made a formal request to the Supreme Court of Justice to define the proper procedure. In the petition, ADOPI suggested that the earlier interpretation of the Dominican Constitution had been too broad and that ONAPI decisions should be treated differently. The Supreme Court of Justice was asked to clarify which court had administrative jurisdiction to resolve conflicts that might arise between administrative institutions of the Dominican government and individuals. ADOPI argued that ONAPI resolutions that involve two private parties must continue to be resolved by the Civil and Commercial Court of Appeals. Even though ONAPI is an “administrative institution”, the nature of the conflicts is different when two (or more) private parties are involved and it is important to have experts reviewing trademark conflicts.

During the past 15 years, the Civil and Commercial Court of Appeals has gained a lot of experience and become specialised in trademark matters. Further, its decisions are issued within an adequate timeframe. The Dominican administrative courts are not familiar with industrial property or trademark conflicts, and these courts have a enormous backlog.

This very important case is now pending before the Supreme Court of Justice.

Jaime Angeles, Angeles & Lugo Lovatón, Santo Domingo

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