Background of Trademark legislation in Cuba
The first decree Law was issued on April 4, 1936, with which the attributive system was established. The registration was granted for a period of 15 years and the nomenclator (national) was of 37 classes of products.
The registration procedure had the following stages:
- Presentation of the application Previous examination (formal and legitimation) Oppositions of third parties Concession or denial of registration
The renewals followed a formal process, however it was necessary to prove the renewals in the country of origin (in the case of foreign applications) if the expiration of the national registry was to be avoided.
Variations could be made to registered trademarks, with the same procedure as applications, including opposition.
On May 14, 1983 Decree Law 68 "On Inventions, Scientific Discoveries, Industrial Models, Trademarks and Designations of Origin" was issued.
This decree regulated, although they were not included in its name, what was related to commercial names, establishment signs, commercial slogans and indications of origin. However, there was no regulatory legislation.
It resumes the attributive system for the granting of rights and did not allow requests for registrations that covered more than one class of products or services to be made. (multiclass). It did not contemplate the Use of the International Classification of the Figurative Elements of Trademarks, Vienna Agreement. It offered a differentiated treatment for national and foreign applicants. The registration prohibitions were grouped without distinguishing by order of transcendence and legal technical importance and did not contemplate means of recourse for applicants or third parties, other than those contemplated in the judicial process. It did not contain a transparent and adequate registration publicity system, nor did it contain the distinction at the time of cancellation of the registration between formal and material defects.
Due to the need to issue a regulation on the matter that would modify the deficiencies pointed out in Decree Law 68, and that would temper it to current realities, Decree Law 203, On Trademarks and other Distinctive Signs, was issued on December 24, 1999.
This new decree was also influenced by Cuba's adherence to international cooperation instruments on the matter, such as: the Madrid Agreement for the International Registration of Marks and the Protocol regarding the Madrid Agreement, the commitment derived from Cuba's membership in the World Trade Organization, which means complying with the TRIPS Agreement and the existence and standardizing trend of the Trademark Law Treaty.
The inspiring sources were:
- Decree Law 68/83. Paris Convention for the Protection of Industrial Property (Stockholm Act of 1967). Madrid Agreement on the International Registration of Marks and its Protocol. Trademark Law Treaty. Agreement on Aspects of Rights of Intellectual Property related to Commerce. (Agreement on TRIPS). National Laws of Spain, France, Switzerland, Brazil, Argentina, among others, Regulation of the Council of the European Communities on the Community Trademark.
The purpose of the decree law is to regulate the reciprocal legal relationships that are established in the sphere of the application, processing, administrative management, concession, administration and observance of industrial property rights over trademarks and other distinctive signs.
The main substantive standards are:
- The attributive system for the granting of rights is enshrined, although in the case of trade names, business emblems and establishment signs, it is distinguished that the exclusive right over them is acquired by their first use in commerce and ends when it is abandoned or the activities of the entity that uses them cease. Protection is granted to trademarks, trade names, corporate emblem, establishment sign and commercial slogans.
Defining the different categories as follows:
- Trademark: any sign or combination of signs that serves to distinguish products or services from their similar ones in the market. Trade name: a word sign that identifies the different natural and legal persons, in the exercise of their economic activity. Business emblem: any visible, figurative or mixed sign that identifies the different natural and legal persons, in the exercise of their economic activity Establishment label: any visible sign that identifies a specific establishment or premises Slogan or Commercial notice: any legend or A combination of words designed to draw the public's attention to specific products or services in order to popularize them.
Sound and olfactory marks are also included, leaving it open to dictate the rules for examination when there is greater clarity on the subject.
The specificities of international trademarks, filed under the Madrid Agreement on the International Registration of Trademarks, are included.
The Collective Trademark is an alternative for the protection of geographical indications. These trademarks are not defined in the same way in the various national laws, but it can be said roughly that they are signs that serve, not to distinguish the products and services of a company from those of other companies, but to distinguish the geographical or other origin. common characteristics of products or services of different companies that use the collective mark under the control of its owner.
These brands generally imply some guarantee of quality. In these, the owner of the trademark is the association or society of producers, manufacturers, etc.
States may also be holders, if their national legislation so permits (London Conference 1934). In this case, the rules for the use of said trademark must be submitted with the application, which may not be transmitted to third parties, its use being reserved for the members of the association.
The Denomination of Origin is defined in Article 156 of the Industrial Property Law:
"Denomination of origin is understood as the name of a geographical region of the country that serves to designate a product originating from it, and whose quality and characteristics are exclusively due to the geographical environment, including natural and human factors".
There are three elements present in an appellation of origin:
1) The name of a geographic region
2) A product of the geographic region designated with the same name; and
3) The qualities and characteristics of said product are exclusively due to the geographical environment, including natural and human factors.
However, in Spain the Industrial Property Statute regulates the registration of three types of distinctive signs:
- Trademarks, to distinguish industrial, commercial and labor products from similar ones Trade names, to distinguish persons or entities in the exercise of a professional, commercial or industrial activity Establishment signs, to distinguish and make known to the public the agricultural, manufacturing or commercial establishment where the activity takes place.
Likewise, the protection of collective trademarks was contemplated, to distinguish the natural products of a certain geographical area or the work products of all the individuals belonging to a group, association, collectivity or corporation.
Another definition of a trademark given by the OCPI specialist is: any sign or combination of signs that serves to distinguish products or services from their similar ones in the market. Which can be grouped into:
- DenominativesFigurativeMixedThree-dimensional shapes Smells and sounds
The functions of the brands are:
- Distinctiveness Indicator of business origin Indicator of quality Condenser of goodwill or reputation Advertising function
Procedure for the registration application.
The minimum requirements are:
- an express or implicit indication that the registration of a trademark is requested indications that allow the applicant to be identified and located the list of products and services for which registration is requested a sufficiently clear reproduction of the trademark payment of the application filing fee
With this decree, greater clarity is achieved by defining the grounds for denial of registration as absolute and relative prohibitions. The latter are those that affect a prior third party right.
In this case, the applicant may show for his own interest, or at the request of the Office, the express written consent of the owner of the right that would be affected, to proceed with the application and registration of the trademark.
Special protection is provided to well-known trademarks, placing them in their proper dimension. The principle of equality of product and service brands is maintained and the period of protection is maintained at 10 years, renewable indefinitely. The mandatory use of registered distinctive signs is maintained as a condition to maintain rights, and prevent market blocking.
It is considered that the use of the mark in a way that differs from the way in which it appears registered only with respect to details or elements that are not essential and that do not alter the identity of the mark, will not be a reason for the expiration of the registration, nor will it diminish the protection that the registry confers.
The multiclass system is introduced, in order to allow a single application to cover more than one class of products and services, and lead to a single registration. The grounds for nullity, cancellation, and expiration, as well as the waiver of rights, are clarified from the legal point of view, regulating the appropriate procedures in a specific way. Extensive and thorough treatment is provided for collective marks.
The rights granted to the owner by the registration are also strictly defined, together with the doctrine of international exhaustion of rights, as well as the means available to the owner to enforce them. The restitution of rights is included as a way to ensure total equity in the procedure and the use of the International Classification of Products and Services (included in Decree Law 68) and the Classification of the Figurative Elements of Trademarks is enshrined..
A new Registry Advertising system is designed, more transparent and effective from a legal and commercial point of view.
The role of the Office as the competent institution in the matter varies considerably, complementing it with more proactive functions, to the benefit of the system in general.
Regarding geographical indications is regulated independently, although this Decree Law 203 is supplementary for everything that is not expressly regulated in the special rule.
Procedure for granting the registration
- Presentation of the application (examination of minimum requirements) If the application omits minimum requirements, the presentation is not valid: immediate notification of the applicant to correct the omission: in the meantime it is considered as not presented.
If the omission is corrected, the date on which the minimum requirements are corrected is entered as the filing date. Received all the documents that make up the application or expired the period of 60 days to submit all the documents that make up the application.
- Prior examination (formal and legitimation) Publication of the request in the Official Gazette within 180 days Opposition and Observation, within 60 days from the date of circulation of the Official Gazette Transfer to the applicant of the elements of the Observation or Opposition, who has 30 days to respond if it considers it pertinent. Possibility of a Conciliatory Act, if the Office deems it useful Substantive examination before the expiration of the term of one year, which also includes absolute and relative prohibitions Final Examination Report, from the Head of the Trademark Department Notification of the Report to the Applicant and the Third Party who has filed Opposition Appeal filed by the applicant or third party who has filed an opposition within 30 days, before the Director General.Possibility of Conciliation Act, if the Office deems it useful.Final ResolutionNotification to the PartiesPublication in the Official GazettePayment of the Fee in the case of granting the registration within 30 days. If the fee is not paid, the application is declared Abandoned. Issuance of the Certificate and registration of the registered trademark.
Against the resolution issued by the Director General, the dissatisfied party may file a lawsuit in court, before the Civil and Administrative Section of the Provincial Court of the City of Havana.
Companies must draw their own strategy to continue taking into account the following aspects:
- Appoint as representatives Official Agents or people who have technical, legal and commercial knowledge Carry out the legal protection of rights in the territories where there is a commercial interest Carry out a feasibility study of introducing the product on the market based on its nature, quality and competitiveness Have Appropriate distribution channels and cost of introducing the product Having potential consumers of the product or recipients of the service When a company brings a considerable amount of products or services to the market, it is advisable to protect each one with a different brand. (Procter & Gamble) A really new product should not be given an already known brand. (Heinz) Precautions when selecting a color. (red: initiative; gray:demotivation) Selection through sex does not always lead to success (Chanel case No. 5; Charlie) Languages and customs have a decisive weight. "Focusing on the customer simplifies the selection process" Search for a name that without describing tells the customer what the main advantage of the product or service is, evoking a desirable emotional state
Actions and Measures for Violation of Rights
Judicial action
In the legal action, the following may act:
- Holder of a Right or Licensee, may file a lawsuit before the corresponding Provincial Court (Economic Chamber) against any person who infringes that right or who executes acts that evidently show the preparation of an infringement. Association, federation, union or other entity representative of the interested parties, as long as they are entitled to do so.Fiscal, when the social or public interest is affected
Measures that can be ordered by the court at the request of the plaintiff
- cessation of acts, repair of material damage, compensation for damages, seizure of products, prohibition of import or export, delivery of the products as property, measures to avoid the repetition of the infringement including destruction, reparation of moral damage, publication of the conviction and its notification to interested persons at the defendant's expense.
The prescription of the Action is five years from the last time the offense was committed.
The Provisional Measures are requested by the Claimant to the court to:
- prevent the continuation of the offense, avoid its consequences, obtain or keep evidence, ensure the effectiveness of the action.
Provisional measures can be requested before initiating the action. In this case, the court, once it has ordered the provisional measure, must require the person requesting it to provide sufficient bond to respond to what results from the process, together with the action, or after its initiation.
The provisional measures that can be ordered by the Court are the immediate cessation of the acts that constitute the infringement, seizure or retention of the products, packaging, labels and other materials that bear the sign of the infringement, or of the means employed and suspension of import or export of products, materials or means.
Any provisional measure executed before starting the civil action, will be without effect after twenty business days counted from the imposition of the measure if the action is not initiated before that term.
The special measures at borders are dictated by the court and must be applied at the border executed by Customs at the time of import, export or transit through the national territory, of the products with respect to which the offense has been committed and the materials or means that served to commit it.
Border measures are executed when the holder of a right protected by this Decree Law, has well-founded reasons to suppose that the import or export of merchandise that infringes that right is being prepared, can request the corresponding Provincial Court, to order the Customs retention of the merchandise object of import or export at the time of its dispatch. Whoever requests the retention must give the court, after timely identification, the necessary information and a sufficiently detailed and precise description of the goods so that they can be easily identified and recognized by Customs.
Once the retention is executed, Customs immediately notifies the importer or exporter of the merchandise, the applicant for the measure and the corresponding court. If, after 10 business days from the date of communication of the withholding to the plaintiff, customs has not been informed that legal action on the merits of the matter has been initiated or that the court has issued provisional measures to extend the retention, it will be lifted and the retained merchandise will be dispatched. In duly justified cases, the term may be extended for 10 business days.
Once the legal action on the merits of the matter has been initiated, the party affected by the retention may appeal to the court to reconsider the retention ordered. The measure may be modified, revoked or confirmed.
The applicant for border measures will be liable for damages resulting from their execution if the measures are lifted or revoked by action or omission of the applicant, or if it is subsequently determined that there was no infringement or imminence of infringement of an industrial property right.
Upon request, Customs authorizes the holder of the right to examine the retained merchandise in order to substantiate its retention and to support its infringement action. The same facilities will be provided to the importer or exporter, consignee or owner, but in no case may this cause damage to the provisions on confidential information.
When establishing a claim for infringement of an industrial property right of those established in this Decree Law, the order to inspect the merchandise will be released by the court that is aware of said process. Small quantities of goods that are not commercial in nature and are part of the personal luggage of travelers or that are sent in small quantities are excluded from the application of the provisions of the preceding provisions.
