Trademark law: legal nature and object of regulation

Defining the brand within the legal body that regulates the protection of industrial property rights constitutes a valuable tool for both trade actors, and for brand examiners and those involved in conflict resolution, to contribute to certainty. in determining which signs can represent and constitute a brand.

In the process of its legal construction, trademark law was vastly developed by two doctrinal currents. The first one framed himself within a right to personality; the second is framed within the rights over intangible assets. Defining the object of legal regulation of trademark law would take us down the path of the second doctrinal trend, which reached its greatest splendor in the first half of the 19th century, incorporating from this point of view, in all intellectual property laws.

The purpose of this work is to comment on the theories developed by the doctrine regarding the legal nature of the trademark, its legal definition and evolution in the Cuban legal system.

Development

Legal nature of the brand

Initially, the brand as a subjective right developed by the doctrine, fundamentally the German one, on two levels: as a right of personality and as a right over immaterial goods.

In the first of the aspects, the brand was considered as a personality right, the link between the sign and its owner is strengthened, as if it were a personal legal relationship, and cannot therefore be transferable since the brand as a characteristic feature of the person is inseparable from it, except in the cases of transfer of the company as an exception, since the personality of the owner of the goods persists in the business body acquired by the transferee. This conception was also linked to the principle of universality in the sense that the law of trademarks had a universal scope, with the legal norms of the State where the trademark originates, being applied to all other states.

This principle, born within German doctrine, first came to light in 1886 and was applied by the Reich Supreme Court until the 1920s, a period in which the character of the intangible good of the brand began to gain strength.

The concept of the brand a right to intangible assets was developed by the doctrine in the sense of a much weaker link between the owner of the brand and the products distinguished by it, which is linked to the principle of territoriality or nationality of the brand in tune with the sovereignty of each State, and is also transferable to third parties.

Previous questions about the brand. Trademark legal definition.

To offer in general what is understood by a brand, we can say that a brand is a sign or set of signs that can be represented graphically, which includes words, names of people, drawings, letters, numbers, sounds, the shape of the product or its respective package as long as it is adequate to distinguish the products or services of one company from those of another. Brands are classified into two basic types: product brands and service brands. But, beyond this legally oriented reference, its conceptualization in the commercial field stands out: a sign adopted and used by the manufacturer or merchant to identify their product or service and distinguish it from what is manufactured or sold by the competition.

The products are said to be silent and the brand is the one who speaks. Although brands imply products, not all products are brands. A product is something that is sometimes bought, while a brand is something that is always chosen. A product is just a good that is produced in a factory, laboratory, etc., while a brand is an idea built in the mind of the consumer, it is what makes the union between the company, the product and its consumer. There are factors that influence the decision to buy a product or service, but the brand is the strongest of all. The values that the brand is capable of transmitting is always a reference for the consumer, and it will be increasingly important as it becomes known and manages to transport that set of values over time.But to achieve notoriety and success, you have to be aware that it is a process of great creativity, commitment and investment on the part of the entrepreneur, and of course, your legal protection as an integral and essential part of that process should not be forgotten..

Most of the current laws offer a legal concept of trademark in a broad sense, not subject to numerus clausus those signs that may constitute trademarks, provided they have a differentiating ability and are capable of graphic representation. And, as an example, they cite traditional marks and modern marks or signs in the sense of their recent legal and jurisprudential recognition. Thus, we have the denominative, the graphic, the mixed, the three-dimensional, the voiced, the olfactory, the gustatory and the tactile marks.

Sound and smell marks within modern brands.

In sound marks, in addition to the requirement of graphic representation through musical notes or a phonogram, a sound version is required. German doctrine particularly points out that the difference between the word mark and the sound mark is that the latter is not a sign belonging to the language.

Scent marks: are those perceived by the sense of smell. The problematic issue surrounding this type of sign lies in the possibility of complying with the principle of graphic representation, since if it did, it would have the possibility of being registered as a trademark. However, despite the arguments put forward by applicants for this type of signs by means of descriptive or figurative elements, or through the combination of a description and an image, the applications have not borne fruit and have been rejected by the courts.

Among the defects raised due to their identification through descriptive elements, we find the absence of an international code for odors, which does exist in the case of colors, an aspect that prevents an olfactory sign from being classified unequivocally.

On the question of the graphic representation of the olfactory mark through figurative elements, the product from which said odor is released is not admissible and therefore neither is a chemical formula of the substance from which the odor is released.

Regarding the combination of means of representation that do not themselves meet the requirements for graphic representation, the jurisprudence deduces that this combination cannot meet said requirement and that at least some of the elements of the representation must meet all the requirements. requirements.

Legislative history in Cuba.

The Trademark Law, published in the Havana Gazette of October 4, 1884, the first law in the field considered genuinely Cuban in this field, contemplated 53 articles grouped into 9 titles and defined in its 1st Article as a brand: “they are trademarks, of trade, of agriculture and of any other industry, the names of manufacturers, merchants, farmers, industrialists of all kinds or company formed by them, the names, emblems, shields, engravings, vignettes, marks, stamps, stamps, reliefs, letters, figures, envelopes, wrappings or signs, whatever their form, so that the manufacturer, merchant or farmer, industrialist of any kind or company formed by them, can indicate their products or merchandise, with the object so that the public knows them and distinguishes them without confusing them with others ”.

Subsequently, during the years following the colonial era and the beginning of the neo-colony, a series of Circulars, Royal Orders, Military Orders, Presidential Decrees and Resolutions issued, made modifications of procedure or adjectives and not of a substantive nature until the promulgation. of Decree Law 805 of the Industrial Property Law of 1936, which was the first indigenous law in this matter, and which defined in its article 95 ¨ A brand is understood to be any sign or material means, whatever its class and form intended to indicate or distinguish of its similar, the products of industry, commerce, agriculture and labor¨;exposing in its article 94 a numerical and non-limiting list of the signs that may constitute trademarks and in its article 95 nine subsections that relate those not suitable to be registered, among other articles (101,102,103,104,106).

This legislative precedent exquisitely drafted for its time due to its clarity and extension in the legal concept of a trademark, constitutes the basis of the legal construction established in Decree Law 68/83 in its article 34 that ¨brand is any sign, word, name or half matter, whatever its class, its shape and its color, that identifies and distinguishes products or services from others of the same class¨. This document does not establish which signs may constitute trademarks, leaving open the general concept embodied in article 34, and sets forth in numerus clausus the signs that may not be registered as a trademark, leaving open a certain insecurity for the applicant in his work of configuration certain of a valid sign.

Present

On the contrary, the current Decree Law 203/99, reflected it in reverse, in what can be called an intermediate system, which after setting the general concept establishes the catalog of signs that can be registered to offer greater legal security for the name of a brand, and constitute a greater guarantee for its post-examination acceptance and obtaining monopoly rights in the exploitation of the product or service that distinguishes it.

It should be borne in mind that this legal body is enacted at a stage in which Cuba is recently incorporated into the WTO (April 20, 1995) and therefore must comply with its Agreements, particularly that relating to the Aspects of the Trade Related Intellectual Property Rights (TRIPS), to continue marching in the forefront with the world environment from its geographical location and its status as a less developed country, although our Decree Law did not include the term “perceptible” establishing a broader conception brand by conferring registration capacity on SOUNDS AND ODORS, despite the current absence of practical implementation.

It did include the phrase "or combination of signs" introduced by TRIPS, leaving behind those equivocal terms introduced by DL 68/83 such as "brand is everything…. material means, whatever its class…", because the brand it is an immaterial good and it is not the one that is classified, but the products or services (for which there are 34 and 11 classes respectively). This concept surpasses that established in the previous legislation, as it eliminates the technical error contained in it and harmonizes with the nature of the brand as an intangible asset.

While in the previous Law the distinction within the same class was required (which could also be interpreted as a branch), the new regulation requires the distinction of the like, independent of the class of the Official Nomenclator in which the products or services are located, which is only indicative.

The current regulation complements the broad definition, in principle, of the trademark, with an enunciation of the possible signs in its Article 3 (the term "may" indicates that it is not an enumeration under a numerus clausus), which has as significant the understanding of some unconventional trademarks expressly, although the previous law did not seem to exclude them ("trademarks are all signs… whatever their class…").

Both laws highlight the main economic function that brands fulfill: the distinctive function.

On the other hand, it establishes that the sign must be capable of Graphic Representation, as a formal requirement of the application for the purposes of its examination, publication and public consultation, introduces DL 203/99, the legal regulation of three-dimensional, collective and notorious. It is also worth noting that the provisions contained in articles 7 of the Paris Convention and 15.4 of the TRIPS were not incorporated into DL 203/99.

Following the guidelines of our National Industrial Property System, it is essential to acquire an adequate culture on the requirements for the legal protection of trademarks in accordance with current legislation, since in the design of its name such requirements must be present, otherwise, from birth it would be vitiated by one of the causes of absolute or relative prohibitions, creating in unison a self-barrier for its protection.

In any case, considering the previous references, the legislator, when offering the legal concept of a brand, is clear that it is constituted by a sign or combination of signs associated with a product or service, without which it has no life, necessary for complement its personality, and whose essence and defining character lies in its distinctive capacity: distinguish that product or services from its similar ones in the market, disregarding elements such as novelty and originality, putting aside, as tributaries, the other guarantee functions of the quality, identification of the origin of the goods and services, advertising, competitive function and protection of the brand owner. A broad conception of the types of signs is also observed, and the rule of specialty governs.

Elements that make up the legal definition.

Among the elements that make up the legal definition we observe: a subjective element, an objective element and a functional element. From the first, we comment that a brand can be applied for by any subject, be it an entrepreneur or not, since the connection between the brand and the business is necessary only in the functional aspect, not in ownership. Decree-Law 203 in its Article 7 section 1, grants the power to request the registration of trademarks to all natural and legal persons, with the sole requirement of having full legal capacity, without any reference to the commercial nature of the activity they carry out. these potential headlines. The second element is given by the fact that despite being an intangible asset, it requires a material support,which is nothing more than its graphic representation for the purposes primarily of use (and of course, of substantive examination). Functionality is given by the interests that the brand protects: the owner, the consumer and the market, so it comes to play a role that is indicative of business origin, distinctive of products, indicator of quality, condenser of good will, and an advertising function.

Conclusions

In the light of the 19th century, it was defined by the doctrine, jurisprudence and legislation on intellectual property, that the brand constitutes an immaterial, non-tangible asset, legally conceptualized by means of its subjective, objective and functional element, whose registration confers on the owner exclusive rights about it and the products that embody and distinguish it. The brand will be, not only for the registration of the sign, but once the triangulated association between the sign, the product and the consumption is configured, which selects it trusting in a certain quality of a product, service or preference. of a business origin. Today, olfactory and sound marks are even recognized in the register, but in order for it to be accepted, like all other signs,they must comply with the requirement of the graphic representation of an unequivocal signature and consistent with the classification of the sign whose registration has been requested, otherwise it will be rejected. The Cuban legal system has closely followed the relative to the legal nature of the trademark and its conceptualization in the law, remaining in this sense at the height of the international legal systems.