The purpose of Trademark Law is to safeguard the brand’s essential legal function: distinctiveness. This protection is designed to prevent risks such as confusion, association, and dilution. Traditionally, dilution, understood as the weakening of a brand’s distinctiveness or its power to attract, has been reserved for well-known, famous, or renowned marks, and applied only in exceptional cases. However, various doctrinal perspectives argue that this protection should extend to all trademarks, regardless of their notoriety. Otherwise, lesser-known brands may gradually lose the value that sets them apart in the marketplace.
In Dominican legislation, the treatment of dilution reveals an apparent inconsistency that creates uncertainty around its true scope. Article 74(d) of Law 20-00 on Industrial Property identifies the risk of dilution of a well-known sign’s distinctiveness as grounds for refusal of registration, using language similar to that of the Andean Community regulations. In contrast, Article 86(f) prohibits the commercial use of signs that may dilute the distinctiveness of a registered trademark, without limiting this protection to well-known marks, a notable departure from the aforementioned framework. This disparity raises a critical question: why is the use of a sign that dilutes a brand’s distinctiveness penalized regardless of its level of recognition, while its registration is not prohibited from the outset? From a logical and systematic standpoint, if the legislator considers the use of such a sign harmful and subject to sanction—regardless of notoriety, its registration should likewise be inadmissible.
This issue becomes particularly relevant when similarity between marks does not cause immediate confusion, as in cases involving different products or services, but affects brands distinguished by a high degree of creativity, especially fantasy marks. These brands may not achieve notoriety due to limited advertising investment, strict recognition criteria in certain jurisdictions, or simply the absence of the “stroke of luck” that propels others to fame. Yet their strong distinctiveness and commercial appeal make them vulnerable to gradual dilution. This leads to another question: what happens to brands in the process of consolidating their market presence and moving toward notoriety? Should they be forced to coexist with similar signs that, while not causing direct confusion, may erode their distinctiveness and compromise their market position?
The contradiction in Dominican law regarding dilution risk can result in conflicting registrations and legal uncertainty for trademark holders. It undermines legal security and threatens the integrity of the registration system by allowing highly distinctive marks to be exposed to dilution at early stages without robust protection. For this reason, we advocate for a coherent legal framework that establishes clear criteria for assessing dilution risk in marks that, while not enjoying extraordinary fame, possess high levels of creativity and distinctiveness. A more consistent registration system would offer comprehensive protection for the brand’s essential market value, ensuring its ability to differentiate remains intact over time.
Author:
Partner
Originally published in Legal Industry Reviews – Dominican Republic edition.
