In the Dominican Republic, a longstanding legal conflict persists regarding the Court’s competence to hear judicial appeals against decisions issued by the public authority overseeing industrial property. This jurisdictional uncertainty has lingered from the repealed Law 1450 of 1937 to the current Law 20-00 of 2000 on Industrial Property, despite the Supreme Court of Justice (SCJ) having clarified the distinction between the administrative and judicial functions of that public body.
Examining recent developments, Article 157 of Law 20-00 provides that “the resolution of the General Director [of the National Office of Industrial Property (ONAPI)]… may be appealed before the Court of Appeal… in its civil and commercial jurisdiction.” In contrast, Article 7 of Law 1494 of 1947, which created the former administrative contentious jurisdiction, stated: “the Administrative Superior Court (TSA) shall not have jurisdiction over: f) civil, commercial matters…”. As a result, the TSA often declared itself incompetent to hear appeals against ONAPI’s decisions, interpreting them as matters of private interest under the jurisdiction of civil courts.
In a cassation appeal filed by a company contesting an ONAPI resolution concerning the expiration of a patent (administrative function), the SCJ deemed the TSA’s interpretation to be both confused and erroneous. The SCJ clarified that “this is not a matter that falls under civil jurisdiction, which would justify its incompetence, but rather… an administrative act issued by a public entity in the exercise of its administrative function, and not the resolution of a dispute between private parties.” The Court thus reaffirmed the distinction between “acts that generate a direct and immediate legal effect on the interests of individuals within a specific situation…” and those acts “which resolve conflicts between parties concerning the registration of an intangible asset in the realm of industrial property.” (Judgment 16 of April 15, 2015).
While this decision offers ample clarity, the TSA currently asserts its jurisdiction over any appeal against ONAPI’s decisions, regardless of the nature of the function performed. Meanwhile, the Court of Appeal continues to issue conflicting rulings, and ONAPI itself contests the TSA’s competence. This stance is supported by a ruling from the Constitutional Court, which—although it addresses the constitutionality of the aforementioned Article 157 of Law 20-00—focuses on the enforceability of the General Director s resolutions, without addressing jurisdictional authority in judicial appeals.
More recently, in another cassation appeal concerning an ONAPI resolution in a trademark dispute between private parties (judicial function), the SCJ maintained its prior stance, affirming that “this pertains to the resolution of disputes between private parties, not between private parties and the Administration. As anticipated by the law [Law 20-00], these are matters that belong more to the civil and commercial jurisdiction than to administrative law.” (Judgment SCJ-PS-23-0140 of January 31, 2023).
This ongoing conflict remains a source of legal uncertainty in industrial property matters, which appears to reflect a lack of adherence to the Supreme Court of Justice’s role in ensuring legal uniformity. Strengthening judicial coherence and fostering a better understanding of applicable laws across the country is essential for the effective and efficient protection of industrial property rights.
Written by Magdalena Almonte
Published in: Legal Industry Review (LIR) 1st Edition, September 2024.
