Application and procedure for registration of trademarks in Cuba

To carry out the application procedure and the registration of trademarks in Cuba, taking into account the formalities established by our legislation, it is necessary at first to create the trademark with its name and design.

Subsequently, take into account to distinguish which products or services you want to register using as a basis the international classifier of products or Nice Agreement. The brand must comply with the requirements established in Decree-Law 203 and not incur in any of the absolute or relative prohibitions stipulated therein. With all these elements, a search for interference is necessary, depending on its positive result, the registration application will be carried out and if it is negative, the natural and legal person that has the claim to request the registration of the trademark will have to change it to do so. This one will interfere with other brands in the same classes.

After the result of the search for interference and this being positive, the application for the registration of the trademark will be filed with the Cuban Office of Industrial Property (OCPI) by submitting a pre-established form which must contain:

• An express or explicit indication that the registration of a trademark is requested.

• The indications that allow to identify and locate the applicant.

• The list of products and services for which registration is requested.

• A sufficiently clear reproduction of the brand.

• Payment of the application submission fee.

If the minimum necessary requirements mentioned to grant the filing date are not met, the Office immediately notifies the applicant and, failing that, it is done by public notice at the headquarters of the Office where the general statements of the applicant and the date will be expressed. of presentation initially granted.

The applicant may correct the omission and meanwhile the application will be considered as not submitted. In the event that the initial application date should be annulled due to non-compliance with the minimum requirements established, the Office will record this act.

If the omission is corrected, the Office will record as the filing date the date on which the requirements set forth above are met. Neither Decree-Law 203, nor its Regulations, set a deadline for the omissions or irregularities related to the minimum requirements to be corrected. If the irregularities are not corrected, the request will be considered desisted.

In the event that the trademark applicant is a natural person, their names and surnames, their nationality, their domicile and the means to locate them are required. In the event that it is a legal person, its official name, its address and the means for its location are also required. Pursuant to article 7.1 of Decree-Law 203, all natural and legal persons, national and foreign, can request the registration of trademarks, in full exercise of their legal capacity.

National or foreign legal entities that have a real and effective domicile or industrial or commercial establishment in Cuba, must attend the Office through their legal representative, through a designated representative or using the services of an Official Industrial Property Agent, of in accordance with article 8.1, section 2 of Decree-Law 203.

Foreign legal entities that do not have a real and effective domicile or industrial or commercial establishment in Cuba, must be represented by an Official Agent, according to the same article mentioned above, this time in the third section.

The representation of the legal person by their legal representative is accredited through the document that establishes or certifies the condition of said person, under the protection of article 8 of the Regulation of Decree-Law 203.

Subsequently, the Office has a term of six months or 180 days to carry out the formal examination of the application once the minimum requirements have been met, where it is verified that a group of formal requirements have been met, which although they do not determine the The granting of the filing date has great importance for the substantive examination. An examination that will take into account the fulfillment of the other formal requirements, the applicability of the absolute and relative grounds for refusal for the registration of the trademark.

When all the documents that make up the application have been received or sixty days have elapsed, counted from the date of presentation of the application, the term in which it is expected that all the documents can be presented, the Office will proceed to carry out the formal examination which includes the analysis of the documents presented, as well as the requirements related to the applicant's condition, pursuant to article 20.1 of Decree-Law 203.

The basic piece of the application is the description whose minimum content is set by law. The description must contain, in addition to the mentions relating to the applicant for the trademark and the priority of the application, the essential mentions to delimit the trademark whose registration is requested: these mentions are, on the one hand, those relating to the sign, and on the other hand concerning the products or services to which the future brand will be applied.

These are form requirements that the law establishes and that are necessary in order to obtain a record. In such a way, they cannot be considered minor or inferior requirements. They are inextricably linked to the application and to the documents that will have to accompany it. The application must also include, among other aspects, the representations of the brand and the color claims if exclusive rights are desired for them, as well as the names of the products and / or services in a clear and precise way to which the brand in question.

Once the formal examination is completed and the irregularities, if any, have been corrected. The Office will publish the trademark registration application in the Official Gazette of Industrial Property. At that time, any interested person may submit observations or oppositions within a period of 60 days, counted from the date of circulation of the Bulletin as established in article 23.1 of Decree-Law 203. These oppositions must be presented with justification and accompanied by the documents on which they are based, the subject who made the observations will not therefore become part of the procedure.

It could be the case that the owner of a previous right is harmed by the registration of the trademark and upon having knowledge through the publication, he may also present the opposition previously, paying the fees established within the same period of 60 days, also accompanying by written its basics. In this case, the opponent is considered a party to the trademark registration process.

The observations or oppositions will be made known to the applicant for the trademark, who will have the option to respond within 30 days from the date on which he is transferred, after this term has elapsed without the applicant having replied, the Office will continue to act. office with the procedure.

At the end of all the terms mentioned, the Office will proceed to carry out the substantive examination, which must be concluded before the expiration of one year from the date of submission of the application, in this examination the prohibitions will be analyzed absolute and relative. At the end of the year, the Office makes the final report where it will pronounce on the granting or denial of the registration of the trademark, in which it will be pronounced in the following three ways:

• Final Concession

Report • Final Concession Report Partial

• Final Denial Report

From all the above we can conclude that the application for trademark registration with its procedure has a series of particularities that, despite not being complex, are strictly enforced, considering that for this procedure the formalities correspond to what is stipulated in national legislation for matter.

Bibliography

Fernández-Nóvoa. Carlos, Treaty on Trademark Law. 2nd edition, Ed. Marcial Pons, Madrid, 2004.

Module 1 and 2 on Trademarks of the DL 101 Intellectual Property Course of the Academy of the World Intellectual Property Organization (WIPO).

Distance Learning Course entitled "TRADEMARK MANAGEMENT AND EVALUATION Ed. 4" from the CEDDET Foundation of the Spanish Patent and Trademark Office.

Legislation

1. Paris Convention for the Protection of Industrial Property of March 20, 1883.

2. Agreement on Trade-Related Aspects of Intellectual Property Rights, adopted on April 15, 1994 as Annex 1C of the Marrakesh Agreement, which establishes the World Trade Organization.

3. Commission Regulation (EC) No 2868/95 of December 13, 1995 establishing rules for the implementation of Council Regulation (EC) No 40/94 on the community trademark.

4. Trademark Law Treaty of October 27, 1994.

5. Trade Mark Regulations, November 30, 1994 (German Trademark Regulations).