Industrial Property is one of the branches of Intellectual Property, which regulates protection from a technical scientific point of view, in such a way that they can be exercised by a natural or legal person on an invention (patent, utility model), an industrial design (industrial drawings and models), a distinctive sign (trademark or trade name) or any of the forms of Industrial Property, being well discussed in the doctrine whether the rights it protects are positive or negative, there is a tendency to recognize said right as a negative right or ius prohibendi intended to prevent third parties without the authorization of the owner, from making use of said invention, trademark or modality in question.
An industrial design or model is understood to be the ornamental or aesthetic aspect of a functional article, which may consist, in the case of industrial drawings, of two-dimensional features, such as motifs, lines or colors and, in the case of industrial models, of three-dimensional features, such as the shape of the item. These must be able to be reproduced by industrial or artisanal means and this protection is practical, since many of the iconic products in the world are examples of articles whose “appearance” can be protected: Apple's iPhone mobile phone, the Airbus A 380, or Herman Miller's Aereon chair, just to mention a few.
Industrial design protection applies to a wide variety of products from watches, jewelry, fashion items and other luxury items, to industrial and medical instruments; electrical appliances and appliances, vehicles and architectural structures; textile prints, recreational items, such as toys and accessories for pets. Doctrinally, industrial designs include industrial models, which are three-dimensional shapes, and industrial drawings, which are two-dimensional shapes, thus extending protection to both.
More and more articles enjoy prestige and international recognition thanks to the characteristics of their design. They increase the marketability of a product, influence creativity, innovation and consequently economic development, encouraging creativity in innumerable spheres both at the level of industry, technology, fashion, architecture, crafts, technical instruments., including the packaging, packaging and presentation of the product, contributing not only to the expansion of commercial activity, but also to the promotion of the export of national products.
In general, they allow you to adapt products to certain market segments, increase competitiveness within it, strengthen a brand and obtain a better return on invested capital. They also constitute business assets that can be licensed or transferred and the most attractive thing: they can be relatively simple and their preparation and protection, unlike other forms of Industrial Property, is inexpensive, so they are accessible for small and medium-sized companies, as well as for individual artists and craftsmen.
The interest in its protection is essentially based on the fact that the owner obtains the exclusive rights to prevent its unauthorized reproduction or imitation by third parties.
In the context of their protection, they also have links with other forms of protection, such as undisclosed information (business secret), unfair competition, patents or utility models, Copyright and Trademark Law. Recently, they have been associated with relevant issues such as the economy (countries' development agenda) and with emerging issues such as climate change, where the implementation of environmentally sound technologies is promoted in which proposals for drawings have appeared. and industrial models under these assumptions and expressions of traditional knowledge such as handicrafts.
At the international level, industrial designs and models are a modality in constant dynamism, for example in 2013, there was an increase of 1.7% in applications compared to 2012. The most prominent countries in this regard have been middle-income countries. Latin America and the Caribbean, compared to the rest of the regions, is one of the lowest percentage, with a significant decrease in 2013 to 1.3% compared to figures in 2004 of 2.8%, however this should change given in This is fundamental to the growth levels of the region in the 2014-2015 period, mainly in Central America (2.7%) and the Caribbean (1.7%).
An interesting peculiarity is that the largest number of applications that are presented correspond to people who want to protect their designs as a priority at the national level.
Regardless of the aforementioned indicators, this is an issue in which it is essential to deepen, given that there are theoretical-practical gaps fundamentally around protection. The first of them is evident in the legislative aspect and the need to simplify and harmonize some rules for the presentation of registration applications, which significantly vary from one country to another and the second in the capacity of countries to protect and manage industrial designs from the filing of applications to their registration in a dynamic manner, encouraging protection in national and export markets, including raising public awareness on this matter.
The process of implementation of the Guidelines has led to the adoption of measures aimed at strengthening the institutional framework, large investments and structural transformations in the industrial sector, prioritizing growth and diversifying exports, substituting imports, restructuring the employment and the increase in non-state forms of management. Additionally, it has been indicated to promote the organization and the development of professional design services capacities, as well as their integration into business systems, which makes it necessary to review the modality in the country in all its structures.
Supporting these processes is also the fact that the country is part, with the exception of the Hague Agreement regarding the International Registration of Industrial Designs, of the rest of the international treaties related to the subject, focused on the protection, registration and classification of these and other Industrial Property issues, among which it is worth mentioning: the Paris Convention for the Protection of Industrial Property, the Convention that establishes the World Intellectual Property Organization, the Locarno Agreement that establishes an International Classification for Industrial Designs, all of which are administered by the World Intellectual Property Organization (WIPO).
Also relevant in the matter, although outside the auspices of WIPO, is the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). In particular, they provide that the protection of industrial designs by Members must start from the fact that they are considered new or original, including specificities for the application of certain requirements related to textile designs, the right of owners to prevent third parties, without their consent, from manufacturing, selling or importing articles that display or incorporate a design that is a copy, or essentially a copy, of the protected design,when those acts are carried out for commercial purposes and the possibilities of anticipating certain limited exceptions to protection. The duration of the protection granted is at least 10 years.
As part of the obligations derived from these regulations, more than thirty legal texts associated directly and indirectly to the modality have been conceived in the country, being notable Decree-Law 290 of November 20, 2011: On Inventions and Industrial Drawings and Models.
Although it is a favorable context for the development of this modality, the truth is that in the country in 2014, the total number of applications for industrial designs amounted to only 11, of which 8 were submitted by Cuban applicants, associated in their totality to the furniture field.
The results of surveys associated with the behavior of the management of the protection of industrial designs and models in a representative sample of the industrial, artisanal and university sectors, show low percentages in legal protection, mainly due to lack of knowledge, lack of budget and lack of interest in the commercialization.
To this must be added that the implementation of the new Foreign Investment Law and its Regulations, including the establishment of diplomatic relations between the governments of Cuba and the United States, represent a challenge for national applicants, since it will entail an increase in foreign requests for their exploitation in the territory and a consequent "block" to the production and commercialization of the articles of the national companies and creators.
In terms of design, from the creation of the National Office of Industrial Design (ONDI) and the Higher Institute of Industrial Design (ISDI), in the 1980s, production and prioritized areas began to be supported in the country economically in need of a better response in this area. Based on the guidelines themselves and the reorganization of the industrial sector, there is an interest in giving design a leading role in the business environment and manufacturing development. In the second half of 2013, the National registry of natural persons authorized to carry out the activity of Industrial Design and Communication was put into operation, as an essential measure to organize and legitimize the activity of professionals in the field.
National designers exhibit their work in forums and even in international competitions without prior protection at the OCPI. The lack of management in matters of Industrial Property by the institutions that protect them and the companies for which they are hired represents a weakness that affects the economy of the company and the country.
In the field of research, there have been four Master's theses since the 2000s and to date, associated with the subject of industrial designs, however none of them addresses in a comprehensive way, the aspects related to the protection of the modality and its impact on national applicants and the rest of the stakeholders involved, and none under the implementation of the aforementioned Decree-Law 290. Hence, from the institutional point of view, it is essential to outline certain management tools aimed at strengthening these aspects.
From the institutional point of view, it is essential to provide the Cuban Office for Industrial Property with certain policy and management tools aimed at increasing the legal protection of the modalities of industrial property, especially industrial designs. Said tools would help promote changes in the promotion, awareness and education of the stakeholders involved, including certain proposals in science, technology and knowledge, capacity building, including possible financing alternatives.
The rise of non-state forms of management, specifically self-employment, has favored the increase in applications for trademarks, including the generation of industrial designs, which are not properly protected. This encourages indiscriminate copying of designs, which affects the economy of the interested parties, including the possibilities for other benefits.
Notwithstanding all of the above, it is our objective to show preliminary results of a market investigation that shows the low rates of registration of industrial designs and to make a brief review of the current legal text on the matter, Decree Law 290, taking into account the important modifications of the same with respect to the previous regulation, Decree Law 68.
- Legislative background of Cuba.
The legislative antecedents regarding Industrial Property in Cuba come from the domain of the metropolis. The freedom of trade in 1818, the reforms of the tax system with the consequent increase in the cost of products, and the launch of the first steam-powered ship in 1819 highlighted the need for further regulation. The first draft of the Decree in Cuba was prepared by the Minister of Overseas, Manuel Tejada, who presented it to the King of Spain.
While Cuba was still a colony of Spain, the first regulation of Industrial Property in Cuba was issued in the 19th century, it was the Royal Certificate of July 30, 1883 that extends to Cuba the Spanish Law of 1820 of Inventions. Subsequent to this, several Royal Orders and Royal Decrees are issued, such as that of August 21, 1884 on Trademarks and Industrial Models.
Later, with the US intervention in Cuba, changes were established in this matter, establishing that the United States patents would be valid in Cuba.
Already in the 20th century, great changes took place in the matter of Industrial Property in Cuba. The accession on November 17, 1904 to the Paris Convention for the protection of Industrial Property of March 20, 1883, was a decisive step forward for the formation of domestic law on this matter.
This important international step was followed at the national level by a series of Presidential Decrees, Orders and Laws that had their peak in Decree Law 805 of April 4, 1936 and its Regulations of 1956 that, although it was modified by different legal documents as a result after the triumph of the Revolution, it was in force until 1983.
An important role in the regulation of this matter in Cuba was played since May 14, 1983, by the already known Decree Law 68 containing the regulations of all forms of Industrial Property, of which regulations were never issued.
The now-defunct legal text on inventions brought together all the forms of Industrial Property, affiliated to the principle that we could call compiler or encoder and was complemented by Resolution No. 999 of the President of the Cuban Academy of Sciences, dated June 13, 1983.
Decree Law 68 of May 14, 1983 has been repealed by consecutive legal bodies, in the matter of trademarks, geographical indications and now in the matter of inventions and industrial designs, remaining only in force, what refers to the restrictive clauses in matter of acquisition of technology by Cuban companies, articles 184 and 185, a matter that requires a new legal text shortly.
- General Aspects of the regulation of Industrial Designs in Decree Law 290.
Regarding Industrial Designs, the definition in article 91 of Decree Law 290 exceeds that of article 108 of Decree Law 68, which, although it protected two and three-dimensional forms, did not contain good drafting technique. It expressly distinguishes and conceptualizes both the drawing and the industrial model.
Establishes novelty as one of the requirements for its protection. It does not mention that it is worldwide, although from a general analysis of the regulations of this modality contained in the legal text, it is presumed that it has this character, however, we consider that such mention should have been express.
One aspect that has been overcome in this rule is the progressivity requirement established in Decree Law 68 for industrial models that constituted an error and led to confusion between this modality and utility models. Certainly it is the novel aesthetic and formal element that distinguishes industrial designs, regardless of whether this element influences the product's operation.
The validity of ten (10) years is maintained, although with the extinct Decree Law 68 to reach ten (10) years of protection it was required to process the renewal after 5 years of validity, since the registration was granted for five (5) years with the possibility of extending it to ten (10) years.
In our opinion, everything related to the rights conferred by the registry and the main limitations of the rights of the holders of this modality is regulated correctly. There is also a correct regulation of the granting procedure for the acquisition of protection. All of this was ignored in the already repealed Decree Law 68.
- Award procedure.
Chapter III and the procedure for registering industrial designs is completely new under Decree Law 290.
The presentation of the application using the form established by the OCPI must be accompanied by all the documents established in article 96.1; instance, description of the industrial design or model, graphic or photographic representation, certified copy of the priority claim documents, whether conventional or exhibition, and power of attorney, if applicable. As an indispensable requirement, the payment of the established fee, and the applicant has three (3) months to present the document that proves the claim of priority under penalty of not taking into account the priority date claimed, as established by the Article 98.1.
Once the formal examination of the application regarding the analysis of the documentation and the verification of the payment of the fee has been carried out, the applicant is notified of the existence of any irregularity, through an Official Request, having 60 days to respond, extendable by thirty (30) days, as established in article 32.1 and once the omissions in the application have been overcome, it is published in a term not less than six (6) months from the filing date as established in article 101.1.
A novel issue is the possibility granted by law to the applicant to postpone the publication of the application until a term not exceeding twelve (12) months.
The publication of all applications was very important and innovative, since only those that were granted were published in Cuba with DL68.
The possibility of filing an opposition was established in article 102, therefore, after publication, a period of sixty (60) days follows, according to article 34.1, for the presentation of oppositions, writings that once transferred to the applicant, the latter can proceed to reply within sixty (60) days from the date of notification, according to article 35.1.
In the substantive examination, a search is carried out in the state of the art of products that have the same design as the product of the application in order to verify that it complies with the novelty requirement and in such case the Registry is granted. If the novelty requirement is not met, a denial resolution is issued, in which case the applicant has 30 days to present an Appeal to the Director General of the Office, who, as interpreted in article 41.1, will have thirty (30)) days to issue Resolution, which exhausts the administrative procedure.
In case the Appeal of Appeal had not been presented, the office dictates Resolution of ratification of denial, establishes the legal text that "ratifying or not" the provisions of the head of the department of inventions, however, in practice it would be difficult to find that without an Appeal, the decision is different from that contained in the first Resolution.
If the case is that the request is granted, the applicant has thirty (30) days from the notification of the Resolution to pay the corresponding fee, as established in article 106.2, issuing the Certificate and registering and publishing the drawing. or industrial model.
Faced with the disagreement of the decision in the application for registration, the applicant can file a claim before the Provincial Court of Havana under Decree Law 290.
The registration of industrial designs is public and is published in the Official Industrial Property Gazette issued by the OCPI.
- Scope of rights and their limits.
It is inferred from the reference clause that the rights can be exercised from the granting, since it was established in Article 44 that the rights over inventions are exercised from the granting, clearly establishing in Article 45 that there is no provisional protection in Cuba. This means that patent rights cannot be asserted by the owner against third parties who have carried out an act of exploitation of the invention between the date of publication of the application and the date of granting of the patent and in the same way would operate for industrial designs.
Article 108 formulates the exclusive right as a negative right, to prevent third parties from performing the acts provided in the legal text.
The new legal text in relation to the defunct Decree Law 68 is very advanced in the scope of exclusive rights, which did not clearly define the content of said exclusive rights.
In terms of limits, the new legal text in articles 109, 110 and 111 also has better formulas than Decree Law 68, clearly establishing the principle of the exhaustion of the right, which has come from German jurisprudence and later extended to Europe, which it operates as a limit to the exclusive right of the record holder.
The doctrine distinguishes three types of exhaustion: national, community and international. In article 110, international exhaustion was established. This type of depletion has certain advantages if we take into account that it stimulates competition and prevents markets from becoming framed and therefore restricting trade, eliminating a possible monopoly on product prices.
- Restoration of rights.
The restoration of rights is incorporated into the legal text, an issue that up to now left the applicant defenseless in certain circumstances. Although article 124 in our opinion has an unclear wording, the deadlines established in article 123 are very precise and this action must be exercised within sixty (60) days from when the impediment ceases.
- Violation of rights.
From the legal point of view, Decree Law 290 is very successful - like Decree Law 203 on trademarks - establishing numerous actions as precautionary measures and also as definitive substantive measures, being able to act the holder of the right and also the licensee. It is curious, taking into account the scarce mention of the co-owner, who in this case is granted rights to this, to exercise actions against an infringement.
Actions for infringement of rights will be established in court before the competent chamber of the Provincial Court of Havana.
- Precautionary measures.
The following are established regarding provisional measures: 1) the moment, 2) types and 3) their execution.
Thus, the precautionary measures can be requested before, jointly or after the action, being possible that the Court orders as provisional measures: the immediate cessation of the acts of infringement, the seizure or retention of the products and the prohibition of the import or export.
Regarding the execution, if it is established before the filing of the claim, it remains without effect if the claim is not filed within thirty (30) business days from the date of execution of the measure.
- Border measures
Finally and in a very novel way, like Decree Law 203 on Trademarks, Decree Law 290 incorporates the regulation of border measures in articles 146 and following, giving Customs the possibility to act, ex officio or by order. of the corresponding People's Provincial Court, which translates into retention when the preparation of an import / export that infringes rights is assumed.
Although Decree Law 68 did not dedicate any section to border measures, their execution by Customs was regulated in the now repealed Resolution 21 of 1997 "Rules for the retention of merchandise for infringement of Intellectual Property rights" that established a procedure whereby Customs only acted at the request of a party allowing retention for ten (10) days.
In September 2001, Resolution 25/2001 was signed by the Head of the General Customs Office of the Republic, which repeals Resolution 21/97 and which in a novel way establishes the procedure for the execution of withholdings by Customs as executing agency, being able to the same act at the request of a party, at the request of the competent administrative or judicial authority or ex officio. However, in practice, customs will execute border measures by order of the competent court.
Conclusions
There is a qualitative leap in the legislation on Inventions, Utility Models and Industrial Designs in Cuba, in favor of the requirements of the Agreement on Trade-related Aspects of Intellectual Property (TRIPS) and compliance by our country with the international commitments assumed from the inclusion of Cuba to the World Trade Organization (WTO), thus extending the Cuban legislative historical wealth that had its origin in the extension to Cuba of the Royal Spanish Cédulas.
Decree Law 290 for the proper application of some of its articles needs to be complemented by a whole series of legal provisions that are not only the Regulations. Although various legal provisions have already been approved in the matter of industrial property in the matter of trademarks, geographical indications, inventions that allow the due protection of the holders and the fulfillment by Cuba of the international commitments acquired, there are still matters to legislate in this area to ensure the effective application of the standards already approved.
This modality is of the utmost importance, and its use has been relegated in Cuban business practice. With the updating of our economic and social development model, a comprehensive renewal of its use is required, both by national and foreign individuals and legal entities that operate in the national economy.
January 2016.
It is well discussed today in the doctrine whether or not Intellectual Property comes from Commercial Law. According to Professor Bercovitz, Intellectual Property is part of commercial law, although Intellectual Property certainly did not exist in its origins. Note that the Commercial Code, although it is the main one, is not the only regulatory body, since competition rules (both competition law and unfair competition) and copyright laws are also important.
Industrial property protects creations from a scientific-technical point of view, while creations from an artistic-literary point of view are protected by copyright.
World Intellectual Property Organization: Industrial Designs and the Hague Agreement. WIPO Publication No. 429 (S) 978-92-805-2008-8 September 2010, page 2.
Ibid.
The level of development of the country in question, GDP, population, R&D among other variables are taken into account.
WIPO: The appeal is in the form. Series No 2. Intellectual property and companies, 2006.
Let us remember that the innovation process includes the materialization of the idea, and among the components of the materialization of the idea we find the projection on the container and packaging, whose fundamental component is the design.
In this case, there is no right granted by a granting body, but the value lies in the confidentiality, the commercial value and the protection measures that the owner of the secret takes for its non-disclosure.
Unfair competition refers to attracting customers in a deceptive way.
China, Brazil, Ukraine, Iran, Turkey. In this regard, see WIPO publication: Facts and Figures on IP, Geneva, 2014, p. 32.
WIPO: 2014, World Intellectual Property Indicators, 2014, page 100. Publication No. 941E / 14 ISBN 978-92-805-2558-8.
ECLAC: Challenges to boost the investment cycle with a view to reactivating growth, page 15, 2015.
The most notable countries are: China, Korea, Turkey, Ukraine and Italy.
Currently, the WIPO is discussing the adoption of a Treaty on the Law of Designs (DLT), based on the technical work carried out in the Standing Committee on the Law of Trademarks, Industrial Designs and Indications. Geographic. This proposal is focused on protection at the national and regional level.
In 2014, a project on Intellectual Property and Design Management began to be implemented in two pilot countries to promote commercial activities in developing and least developed countries.
Guidelines of the Economic and Social Policy of the Party and the Revolution. Approved in April 2011.
An example of this is the Mariel Special Development Zone and the entry into force in 2014 of the new Foreign Investment Law and its Regulations.
It was adopted in 1925 and came into force in 1928. Cuba is not a member of it. At present, it has 60 Contracting Parties. In 2010, the application of the 1934 Act was suspended and there has been a decrease in registration activity under the 1960 Act, for which the most important is the 1999 Act and the Common Regulations of the 1999 Act and the Act 1960.
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 June 2, 1934, in Lisbon on June 31, October 1958, in Stockholm on July 14, 1967 and amended on September 28, 1979. Cuba acceded on September 22, 1904 and entered into force on November 17, 1904. The 1967 Act is in force.
In addition to establishing the organization, in its article 2 subsection viii it defines Intellectual Property, recognizing among its related rights to industrial designs. Cuba acceded on December 27, 1974 and entered into force on March 27, 1975.
Signed in Locarno on October 8, 1968 and amended on September 28, 1979. Cuba acceded on July 9, 1998 and entered into force on October 9, 1998.
Contained in Annex 1C of the Marrakesh Agreement establishing the World Trade Organization of April 15, 1994, which entered into force on January 1, 1995. It is based on existing multilateral systems for the protection of the various intellectual property rights that encompasses, and includes many of its substantive provisions. It was endorsed by Cuba in 1995. Section 4 Articles 25 and 26 is dedicated to the conditions for the protection and protection proper of industrial designs. In 53 the issue of the equivalent bond associated with the action of the customs authorities regarding the suspension of the dispatch of merchandise that they carry is addressed.
It gives freedom to Members to apply national legislation on industrial designs or through copyright legislation on this item.
"On the condition that such exceptions do not unjustifiably violate the normal exploitation of protected industrial designs or cause unjustified damage to the legitimate interests of the owner of the protected design, taking into account the legitimate interests of third parties".
Understood as the process that goes from the application to the registration of industrial designs.
Law No. 118, of March 29, 2014 and Decree Number 325 of April 9, 2014: Regulations of the Foreign Investment Law.
Attached since 2013 to the Ministry of Industry (MINDUS).
ISDI is linked to important design projects and annually graduates professionals of recognized national and international prestige.
Cuban Office of Industrial Property, based in Picota No. 15 between luz y acosta is the body for granting rights in Cuba, which grants the Certificates of Registration of Industrial Designs in Cuba to Cuban and foreign natural and legal persons.
In this regard, CASADO ALVAREZ Nelson: Examination of Applications for the Registry of Industrial Designs, Havana, 2004; RODRÍGUEZ WICHMAN Elsa H: The protection of exportable Industrial Designs and Models, in Cuban companies in Business Improvement, Havana, 2009 and ALMANZA SUÁREZ Yamila: Proposal of an informative product on industrial models. Link with the administrative process of the OCPI, Havana, 2009.
Legal Norms, Historical and Legislative Background. (available at www.ocpi.cu/normasjurídicas.htm)
Vázquez De Alvaré, Dánice; "The Cuban Inventions legislation in tune with the TRIPS requirements" in Journal of Intellectual Rights volume 18, ASIPI.
It establishes complementary provisions of a procedural nature to Decree Law number 68. This Resolution is not in force.
Decree Law 290 ON INVENTIONS AND DRAWINGS AND INDUSTRIAL MODELS Ordinary Official Gazette of Wednesday February 1, 2012, Number 2, Year CX, page 9
Due to errors in the publication, this Decree Law was published again in Extraordinary Official Gazette No. 24 of April 16, 2012, year CX, page 99.
ARTICLE 119.- Against the resolutions of the Director General of the Office, once the administrative procedure has been exhausted, within thirty business days following notification, the parties may establish a claim in administrative proceedings before the competent Chamber of the Provincial People's Court of Havana.
ARTICLE 126.1.-The purpose of the registration of the different protection modalities that this Decree-Law regulates is to refer to the requests, the concessions of rights and all the relevant data concerning them. 2. The Registry is public and is in the custody of the Office. The publicity is made effective with the publication, the consultation of the public and by the certifications issued at the request of the interested party.
Brief comments on the new regulation of Inventions in Cuba with Marta Moreno Cruz in Revista Cubana de Derecho. UNJC. Number 41 of the Cuban Law Review (January - June 2013)
Download the original file
