No resolution yet for long-running dispute over family name and distinctive sign

Dominican Republic
  • The Dominican Republic Patent Trademark Office has rejected a cancellation action lodged by Jottin Cury against the trade name Jottin Cury & Asociados
  • The case involves the clash between a personal name and a registered trade name
  • The situation is complicated by the fact that the trade name was legally applied for and the original applicant is now deceased
     

The Dominican Republic Patent Trademark Office (ONAPI) has rejected the cancellation action lodged by Jottin Cury (son) against the trade name Jottin Cury & Asociados (Registration 257474/2008).

Jottin Cury (father) was a well-known attorney in the Dominican Republic. He initiated his practice in 1949. In 1998 the law firm Jottin Cury & Asociados was incorporated and in 2008 the trade name Jottin Cury & Asociados was registered at ONAPI for the provision of legal services.

The entity Cury & Cury was incorporated in 2011, managed by Julio Clury. This entity acquired rights in the Jottin Cury & Asociados trade name before the death of Jottin Cury (father).

Following this, Jottin Cury (son) filed a cancellation action against the trade name Jottin Cury & Asociados, based on the following reasons:

  • The trade name violates the personality rights of a third party, in particular the surname, signature and image, unless that person had granted consent or – in the event of their death – their successors had provided consent (Article 74(e) of the Industrial Property Law (20-00/2000), modified by Law 424-06/2006 on DR-CAFTA).
  • The rights in question are fundamental rights protected under the Constitution, as they are intrinsic to a person.
  • The fact that the trade name for which cancellation was being sought was in the custody of Cury & Cury, a company under the direction of Julio Clury whose name is not Jottin Cury.
  • Even though the trade name was also the name of Jottin Cury’s father and that it is likely that an authorisation to register the same was provided, his father had now died and said registration is in violation of the legal disposition cited above.
  • That the right inherent to the human person begins at birth and is extinguished at death, hence in order for the trade name Jottin Cury & Asociados to be considered valid it needs to be authorised by all of its successors.
  • Besides the fact that Jottin Cury (son) is the successor of Jottin Cury (father), he is the only person with that name in the Dominican Republic and hence his consent for the purposes of maintaining the validity of the name in favour of a third party is necessary – a situation that has not occurred.
  • The registration affects Jottin Cury’s (son) personality rights – a third party, such as Cury & Cury, cannot safeguard his good name and reputation. In particular Jottin Cury (son) is an attorney and Cury & Cury offers legal services – this puts his reputation in the hands of a third party, which has no reason to safeguard it.
  • By the time the action was lodged, Jottin Cury (son) had been made a constitutional judge – while this meant that he could no longer offer legal services or have a private law firm, the trade name incorporating his name could still be questioned by other judges or used to try to take advantage of his position in cases being discussed at courts and handled by Cury & Cury.

On 28 May 2015 ONAPI’s Distinctive Department issued Resolution 0274 rejecting the cancellation action filed by Jottin Cury (son) on the basis that the registration had been filed and obtained by Jottin Cury (father) who had the right to obtain this registration. The assignment of the rights over the trade name had been duly filed with ONAPI and all legal formalities had been met – in industrial property matters good faith is presumed.

This decision was appealed to the general director of ONAPI, who has now notified the parties of Resolution 0094/2017, rejecting the appeal action lodged by Jottin Cury (son). In a press conference Jottin Cury (son) indicated that Julio Clury – his brother – has his own firm with the name Julio Clury. However, he is preventing Jottin Cury (son) from using his own name in a professional context.

This decision is not final and an appeal has now been filed with the Civil and Commercial Court of Appeal.

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