The commercial names are configured with the capacity that they reach to identify entities and companies in the commercial sphere, which are aimed at distinguishing natural or legal persons from the rest of those engaged in similar economic activity in the market.
Trade names are capable of being registered by the owners, but simply the use of that sign in commerce confers protection on it, without the need for registration or deposit in any registry, although its registration would avoid numerous conflicts, on the basis that it constitutes declarative evidence of the existence of exclusive rights over that conventional designation; In addition, in practice, it constitutes a guarantee for the owner of the same against third parties, to advocate for their rights before competitors who use the same sign illegally in the territory where it is registered.
The National Legislation of Trademarks and Other Distinctive Signs
Decree-Law 203 on Trademarks and Other Distinctive Signs establishes everything concerning trade names in articles 2 subsection b) and in article 97 et seq., Thereby regulating the functions and characteristics respectively that should prevail in these names for the national territory.
In our country, unlike others, trade names are made up of only one word part, and although in practice it is not very frequent, we have seen the use of graphic images, which are cataloged by entities as a trade name. The basis that it is a name exclusively responds to the exercise that is given to that sign in operations and banking transactions, which should not have figurative images, since they would hinder this type of activity.
Among the problems that occur most frequently in relation to trade names, we find what is established in the prohibitions for their registration.
Initially, we have that these signs are likely to be confused in the trade with others that are in the application status or previously registered, since their use proves instant protection, and once it is intended to register, the presence is verified of a pre-existing registration similar to the commercial name sought to be registered. Which would undoubtedly lead to an imminent risk of confusion or error if it were to be registered, on the basis that the services or the object may be similar for which that sign was conceived to another one already registered previously, that is used by people who are also offering or marketing services or products of the same nature. This is regulated by article 98 section 1 subsection a) of the aforementioned Law.
The same are the assumptions in which the composition of trade names by design elements, drawings or graphic distinctive is centered, despite being prohibited, they do not correspond at all with the company or owner that they intend to particularize in commercial traffic, maintaining the observance of the subjective and objective theories on which the doctrine is based on the use conferred on the trade name. The same happens when you want to use the designation of geographical names as trade names, which cannot be registered, or used as a sign or as elements of the sign, taking into account that all natural or legal persons residing in that region that carries by name that geographical denomination are authorized to make use of it,An example of this is the name Cuba. In accordance with the provisions of current legislation on this matter in article 98 section 1 subsections b) and c).
In some cases, these conventional designations that make up trade names are used in ways that are contrary to morality, public order and patterns of social conduct, fortunately this situation is not a frequent practice, since applications for the registration of trade names are no longer received. with these characteristics. This assumption, like the aforementioned, is also specifically regulated in article 98, section 1, subsection d) of the current Decree-Law.
Sometimes it happens that the commercial name used corresponds in whole or in part with the names of known persons who are not related to the registrant, without having the authorization of the owner or his heirs, as well as of institutions empowered to do so. such an effect; a very common case is the use of names of martyrs of the country, a prohibition for registration established in article 98, section 1, subsection e).
Another cause for prohibiting the registration of trade names is based on the use of these signs in an incorrect way, since they are composed of different identity, nature and commercial activity from those of the companies that they intend to distinguish in the market, which in the end, it wrongly manifests the business origin or the characteristics of the entities in relation to the products or services that are marketed or offered, contributing to confusion or error to the consumer public for whom the different services or products would be intended, incurring in the provisions of article 98 section 1 subsection f).
Another of the most frequent cases that occur in this type of distinctive sign is the application for the registration of contradictory trade names to a pre-existing one in the commercial register, in favor of the same person with the aim of developing the same economic activity. This case occurs mainly due to lack of knowledge of the companies regarding the definition and use of trade names, the national law on this matter supports this prohibition in article 98, section 2.
A case that occurs to us quite regularly is when the same company uses and intends to register more than one commercial name to carry out similar economic activity, which is contrary to what is stipulated in article 2 paragraph b) of the aforementioned current law.
In practice, we find that the names designated to constitute trade names are really inconsistent to perform that function according to their definition and for which they are conceived. One of those cases is when these names are made up of an exaggerated number of words or characters, a situation that goes awry in the desire of the entities to identify and thereby distinguish the company from others that have correlative activities in the market.. Conventional designations used as trade names must be made up of short names that are easy to remember and pronounce, so that the consumer public to whom such services or products are referred can establish a more direct and effective association with the company.that does not give margin to confusion or error to them.
Paris Union Convention
The Paris Convention in its normative body, in its article 8 referring to trade names, states that they must be protected in all contracting States without any obligation of deposit or registration. Later in article 9 the possibility of the embargo operating in the event that the incorrect use of a commercial name occurs in those countries where that designation is under legal protection. Meanwhile, Article 10 establishes what corresponds to the prohibition against committing an act capable of causing confusion in any way to the consuming public, by containing false indications about the origin of the product, identity of the producer, manufacturer or merchant.
TRIPS Agreement
In the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), no mention is made of trade names, however everything related to this type of denominations that is included in the Convention of the Union of Paris.
Spanish Trademark Law
Spanish legislation, namely Law 17/2001 of December 7, on Trademarks in its article 87 section 1, defines the figure of trade names showing great identity with regulated national legislation for the subject to which we refer, however contains in detail among its precepts the signs of this type that are cataloged in the sector as descriptive, which incur an absolute prohibition and possible cause of irregularity in trade names, such as using, almost entirely, elements that denote quality, quantity, destination, value, place of origin or significant aspects of the characteristics of the company and the purpose for which it has been intended,opposing for the most part the doctrinal practices and currents that these figures illustrate within industrial property and the commercial sector.
A striking aspect of the Spanish Trademark Law that has led to debate is the treatment given to trade names when they are called a sign, knowing that this word is not equated with what properly constitutes a denomination, but rather It leaves open the possibility that the sign in question may be made up of a sign or simply a figure, if we look etymologically, that word refers to it.
Another more generalized case in the illegitimate use of the trade name is when it consists exclusively of a generic or specific name of the economic activity carried out by the company, for which said designation was conceived. This practice does not comply with what is established in the Spanish Law for these signs, on the basis that it is opposed to one of the most obligatory principles of competition, in which the distinctiveness between the companies that contributes to the differentiation in the economic traffic to entities that are engaged in activities of a similar nature, since these names have generally come to be used in ordinary language, for which their daily use by everyone in that sector is required.
A final prohibition that I will refer to in terms of Iberian legislation is the one that refers to the use by the owners of companies and establishments of commercial names that contain reproductions and imitations that are identified with shields, flags and emblems of municipalities, provinces or States without any authorization from the institutions empowered to do so.
The other legislations consulted in this matter of member countries of the Paris Union Convention, namely the Law of Trademarks and Other Distinctive Signs No. 7978 of Costa Rica, the Law of Trademarks and Other Distinctive Signs No. 380 of Nicaragua and the Law of Industrial Property No. 823 of Peru, among others, maintain harmony as far as their national law is concerned, in relation to what is regulated in International Legislation on this matter, although there are particularities that define the commercial name, always trying to find these laws in line with the specificities of the commercial activity of those countries.
Conclusions
In Cuba we have a large number of companies that use signs such as trade names, which are sometimes not strategically used in an ideal way, as they are insufficiently devised and exploited, on the basis that the purpose for the which were created in accordance with the definitions that correspond to these conventional designations, since their use on many occasions causes problems for consumers in terms of the business origin of the services or products that are marketed or produced by the entities. The same is when the denominations are too extensive or when the same company uses more than one commercial name to carry out similar economic activity.This problem hinders the development and normal development of commercial activities.
Through this work it is intended to bring the business sector and the general public closer to the importance of the correct selection of trade names, taking into account each and every one of the requirements established for it in accordance with the information that exists on this matter, assessing the functions inherent to this designation in the market, turning the commercial name into assets and heritage of the entrepreneur who owns the sign, based on the scope and notoriety that sign may have in a territory according to its continuous use, thereby establishing an indissoluble link between the owner of the entity, the economic activity carried out and the consumer public;The latter is an essential collaborator inasmuch as he is the one who determines acceptance and thus the prestige to be achieved by that distinctive sign.
Bibliography
Jalife Daher. Mauricio, Comments on the Industrial Property Law. MacGraw-Hill Interamericana Editores SA de CV México, DF, 1998
Jalife Daher. Mauricio, Legal Aspects of Trademarks in Mexico. Ed. Themis SA de CV México, DF, 1999
Fernández-Nóvoa. Carlos, Treaty on Trademark Law. 2nd edition, Ed. Marcial Pons, Madrid, 2004.
Module 1 and 2 of Trademarks of the DL 101 Intellectual Property Course of the Academy of the World Intellectual Property Organization (WIPO)
Cuban Legislation
Updated Commercial Code, Editorial Félix Varela, Havana, 1998.
Decree-Law Nº. 203 of December 24, 1999, called On Trademarks and Other Distinctive Signs.
Foreign Legislation
Convention of the Paris Union for the Protection of Industrial Protection signed in Washington in 1911.
Law of Trademarks and Other Distinctive Signs No. 7978 of Costa Rica.
Law 17/2001 of December 7, on Trademarks, Spain.
Decision 486 of the Commission of the Andean Community.
Law on Trademarks and Other Distinctive Signs No. 380 of Nicaragua.
Industrial Property Law No. 823 of Peru.
Mexican Industrial Property Law.
Articles on the Internet
www.ucam-sc.com.br/open. Marcelo de Lima. Assafim Joao, The protection of the trade name before the trademark in Brazilian law. Doutorando no Institute of Industrial Law of the University of Santiago de Compostela - ESP.
