The present work addresses, with reference to Cuban legislation, the essence of the doctrine of secondary meaning or supervening distinctiveness, as well as, its influence on the constitutive system of trademark law, considering the fact that the national legislator provides in the articles of Decree Law 203 on trademarks and other distinctive signs of 2000, that two of the absolute prohibitions established in said legal body can be validated, by acquiring the sign, which ad initio was denied, distinctive ability in relation to the products or services to which that it is intended given its use in commerce, without this contradicting the constitutive system of acquisition of rights that prevails in the national legal system.
Introduction
The world economy behaves in such a way that the uncertainty of the market itself shows us that productive capacity does not become a competitive advantage, so there are a number of factors that, when combined, help a product to reach the market with certain strength. allows you to increase your level of competitiveness, we are talking, among other things, about the strategy followed for the commercialization of products or services based on the use of trademarks as distinctive signs.
Therefore, it is evident that those entrepreneurs who bet on leadership in a certain sector, seek at all costs to position their brand in the consumer's mind based on the psychological link that relates the product or service with the sign that distinguishes it.
Faced with this reality, and given the distinctive nature of trademarks as a meta-legal phenomenon, the Cuban legislator chooses to reflect in the articles of Decree Law 203 on trademarks and other distinctive signs, the doctrine of the secondary meaning or supervening distinctiveness, with the purpose of validating two of the absolute prohibitions on the registration of trademarks, due to the distinctive character that the sign has acquired due to its use in the market.
Development
Trademark law establishes two basic systems to acquire rights to trademarks: the one where the use of the distinctive sign in the market grants exclusive rights over it, the registration being, in this case, merely declarative; and another system, in which the registration of the trademark in the pertinent Office is a sine qua nom condition for rights to be registered, offering the latter greater legal certainty, in the author's opinion, if it is taken into account that it avoids uncertainty. of not knowing exactly the signs that interfere with the one intended to be used in commercial traffic, and there may well be collisions between them. It is valid to clarify that Cuban trademark legislation follows the second of these systems (constitutive).
In countries such as Cuba, or those that avail themselves of the directives of Regulation (EC) No. 40/94 of the Council of December 20, 1993 on the Community Trademark; to cite just a few examples, although they present a system where the registration of the trademark is constitutive of law, the legislator saves those signs that lack distinctive aptitude at the time of registration through the establishment in the legislation of the doctrine of the secondary meaning or super distinctiveness.
The Cuban legislator, who will be a reference for the analysis, in Decree Law 203 on trademarks and other distinctive signs in its article 16.2 establishes:
“Notwithstanding the provisions of subsections a) and c) of the previous section, a sign may be registered as a trademark when the person requesting its registration or its originator had been using it in the country and as a result of such use the sign has acquired sufficient distinctive aptitude with respect to the products or services to which it is applied ”.
We are talking then about a sign that at the time of registration did not have distinctive aptitude, but that its own use in the market caused the consuming public from an ideological point of view to give it a new meaning that will be in accordance with the indication., in the first instance, of the business origin of the product or service that is distinguished with it. "This is the phenomenon contrary to the vulgarization of the brand."
The doctrine of secondary meaning, although it maintains its essence, is specified in different ways according to what is established by the different legal bodies, which regulate which of the prohibitions related to the distinctiveness of the sign can be overcome with the use of that in the market.
There are several elements to be taken into account by the examiner to evaluate if the sign really acquired sufficient distinctiveness to be able to fulfill its functions as a brand, among these we find:
a) the use of the trademark, an indispensable condition for the prohibition to be overcome given that the supervening distinctiveness rests precisely on this assumption, there are doctrinal discrepancies regarding the analysis of its intensity, the author coinciding with the position adopted by the Professor Fernández Novoa, who considers that although the prolonged use of a brand is favorable, the efficacy of intense use should not be ruled out in any way, even if its duration is shorter.
b) The market share that the brand has, an element that indicates that the consuming public has really given a new meaning, this time as a brand, to the sign that it is intended to register, with the market share being reached as a weight indicator at the time to form conviction in the examiner, who must be sure that this quota is really the result of the recognition by the consuming public of the distinctive abilities of the sign.
c) The importance of the investments made by the company to promote it, this indicator that the consumer has received sufficient information by any means that reinforces the new ideological content of the sign, constituting further evidence, in the arduous demonstration of the acquisition of distinctiveness by the sign.
d) The proportion of the sectors that identify the product, attributing a business origin thanks to the brand, there is no doubt that this is a determining element when deciding the examiner regarding the registration or not of the sign as a brand, since a Once this is able to indicate the business origin of the products that it clearly distinguishes, it would be demonstrating that without a doubt it acquired the distinctiveness required by law, and also necessary for it to fulfill its functions as a brand without the objective of maintaining refusal of registration.
Other criteria that agencies and institutions related to trade may offer are also taken into account, as well as surveys carried out on specialists and consumers of the product distinguished by the sign. In relation to these elements, it can be said that they have a great interrelation, always starting from the use of the sign and seeking as a supreme objective the demonstration of the distinctiveness achieved.
It is also wise to clarify that there is a perfect delimitation between the ensuing distinctiveness and the notoriety achieved by a sign that was perfectly registered at the time, and that owes its fame or reputation, first of all, to the degree of knowledge or recognition of the brand in the relevant sector of the public for which it is intended, thus enjoying heightened protection against any risk of confusion that may arise due to the unfair use that a third party intends to obtain, without even needing to be registered, in the country where any assumption occurs of unfair competition in relation to it, so that it obtains protection.
For its part, the doctrine of secondary meaning seeks to break with an imposed prohibition, demonstrating that the vices that the sign presented at the time of its application, and that the legal system foresees can be validated, have actually been overcome as a result of its use. on trade. So when saying of the Spanish professor Carlos Fernández Novoa both doctrines present marked functional differences.
After a precise analysis of the constitutive system of acquisition of trademark rights and what the doctrine of supervening distinctiveness or secondary meaning establishes, the following question could arise:
Is the doctrine of the ensuing distinctiveness of the sign counterproductive with the principles of the constitutive system of acquisition of the right over the trademark?
In response to this question, and from the author's point of view, there is no contradiction between the doctrine of secondary meaning and the constitutive system of acquisition of trademark rights that Cuban legislation embraces, since the distinctiveness that occurs does not consist in the granting of rights from the use in commerce of the distinctive sign, but in the validation, the overcoming of two of the registry prohibitions for trademarks, an issue that will produce legal effects once the registration of the sign has been carried out before the competent authority.
In this case, the faculties that emanate from the declarative system of acquisition of trademark rights are not mentioned, rather, it is about the flexibility that the legislator uses so as not to obviate a meta-legal reality that commercial practice imposes a product on itself. nature of the trademarks, but without violating the basic principle of the constitutive system of trademark law that establishes that the rights are born precisely with the administrative act of registering the distinctive sign.
Conclusions
By way of conclusion, we can say that the secondary meaning is based on the main function of a brand, which is to be distinctive and differentiating the products or services for which it was created, to the point of clearly indicating the business origin of these, and from such perspective is that the legislator creates this figure that pretends to be in tune with a market reality that has been able to overcome the prohibition imposed by the legal framework, since at first the intention is stopped to register a sign as a trademark when it lacks, when its registration is requested, distinctive skills, these appearing later thanks to strategies related to the use of the sign in commerce,who is gaining space within the market segment for which the product or service intended to distinguish is destined, achieving that the consuming public gives it a new meaning by creating a psychological link that accentuates the trilogy: sign - product - producer or provider company of services, thus reaching the sign itself to break with the legal prohibition; This does not mean that the recognition acquired by him is capable of generating the birth of rights in favor of the employer, an obvious question, if one takes into account that the constitutive system of trademark rights establishes that the rights are only acquired when the registration is made. before the relevant Office.sign - product - company producing or providing services, thus reaching the sign itself to break with the legal prohibition; This does not mean that the recognition acquired by him is capable of generating the birth of rights in favor of the employer, an obvious question, if one takes into account that the constitutive system of trademark rights establishes that the rights are only acquired when the registration is made. before the relevant Office.sign - product - company producing or providing services, thus reaching the sign itself to break with the legal prohibition; This does not mean that the recognition acquired by him is capable of generating the birth of rights in favor of the employer, an obvious question, if one takes into account that the constitutive system of trademark rights establishes that the rights are only acquired when the registration is made. before the relevant Office.taking into account that the constitutive system of trademark rights establishes that the rights are only acquired when the registration is made with the pertinent Office.taking into account that the constitutive system of trademark rights establishes that the rights are only acquired when the registration is made with the pertinent Office.
Bibliography
1. Council of State of the Republic of Cuba. (2000). Decree Law No. 203 on Trademarks and other Distinctive Signs.
2. Fernández Novoa, C. (2001). Trademark Law Treaty. Madrid: Ediciones Jurídicas y Sociales SA.
3. Miranda, C. (2008). Generalities in relation to trademarks and other distinctive signs. Conference. Master in Intellectual Property Management, Cuban Office of Industrial Property.
4. WTO. (1994). Agreement on Trade-Related Aspects of Intellectual Property Rights.
5. WIPO. Paris Convention for the Protection of Industrial Property of March 20, 1883, revised in Brussels on December 14, 1900, in Washington on June 2, 1911, in The Hague on November 6, 1925, in London on 2 June 1934, in Lisbon on October 31, 1958, in Stockholm on July 14, 1967 and amended on September 28, 1979.
6. Vázquez D´ Alvaré, D. (2008). The birth of the right on the brand. Conference. Master in Intellectual Property Management, Cuban Office of Industrial Property.
