Trade and Service Marks

– Decree-Law No. 203 on Trademarks and other Distinctive Signs, in force since May 2, 2000.
– Regulation of Decree-Law No. 203, approved by Resolution No. 63/2000, in force since May 24, 2000.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Stockholm Act.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since March 27, 1975.
– Agreement for the Legal Protection of Inventions, Industrial Models and Utility Models and Trade Marks in the Fulfillment of Economic and Technical-Scientific Collaboration (CMEA Agreement of Havana, 1976).
– Madrid Agreement Concerning the International Registration of Marks, since December 6, 1989.
– WTO’s TRIPS Agreement, since April 20, 1995.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since December 26, 1995.
– Protocol Relating to the Madrid Agreement, since December 26, 1995.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since July 18, 1997.

Filing

Applicant: companies, individuals, partnerships, trade unions or lawful associations, provided they meet the requirements of the Decree-Law.

Foreigners and nationals not living in the country: must appoint a local agent.

Trademark of foreigners: foreigners enjoy the same rights as Cuban nationals.

Kinds of protection: trademarks and collective trademarks.

Marks for service: registrable.

Novelty: the trademark applied for must not conflict with a trademark already registered.

Exceptions to protection (absolute grounds for refusal): cannot be registered as trademarks: (1) trademarks which are devoid of any distinctive character; (2) trademarks which consist of signs or indications which have become customary in the current language; (3) trademarks which consist of signs or indications which describe or characterize the goods or services or consist of a laudatory expression; (4) a sign that consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods; (5) a trademark that deceives the public (for instance as to the nature, quality or geographical origin of the goods or service); (6) a color by itself; (7) a trademark which consists of or contains a representation of a coat of arms, flag, insignia, country’s name or international organization’s name or currency without authorization; (8) a trademark which consists of or contains a representation of the Cuban official emblem or international emblem without authorization; (9) signs which consist in plant variety denominations; (10) a sign contrary to public policy or to accepted principles of morality (for instance against religious principles, law or ideas); (11) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.

Appellations of origin: registrable.

Association marks: not provided for.

Priorities: applicants may claim priorities under the International Convention.

Classification: international.

Multi-class applications: permitted.

Territory covered: the territory of the Republic of Cuba.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney or letter of authorization, not legalized;
2. Electrotype and 30 prints, which must correspond exactly with the trademark;
3. Priority document (if priority is claimed).

For renewals: same requirements as those required for filing the original application for registration.

Filing without one or more requirements: possible, but should be completed later.

Electronic signatures: are not accepted.

Examination

Amendment of application: possible if not substantial.

Examination: formal, and comparison with those marks already granted or applied for.

Opposition: possible; applications are published in the Industrial Property Bulletin for opposition purposes.

Observations: possible if no prior right can be alleged; it is possible to file observation instead of filing opposition.

Disputes about ownership: possible only after registration.

Application kept secret: not provided for.

Appeals: upon receipt of a preliminary decision, it is possible to file an appeal before the Director of the Trademark Office. An appeal against the final decision may be lodged before the People’s Provincial Court within a term of thirty days from the notification date of the decision. The decision of the Provincial Court may be appealed at the Supreme Court within a term of five days.

Letters of consent: can be accepted.

Urgent registration: not provided for.

Provisional registration: not possible.

Publication: applications are published for opposition purposes, and after registration.

Correction of registration: possible.

Granting

Delivery of document: about a year after the filing of the application.

Beginning of protection: from the date of filing of the application.

Kind of property: the registrant has the exclusive right to the enjoyment of the benefits gained from the registration.

Duration – renewals: ten years, renewable for further periods of ten years.

Latest term for renewal: at the end of the ten-year period.

Term of grace for renewal: six months with fine.

Modification of the mark: not possible after registration.

Change in the list of goods: possible, but only for limitation, enlargement of goods is not possible.

Obligation to use: use is a fundamental condition for maintaining the validity of a trademark; for that reason, if the owner of a trademark does not use it during three consecutive years starting from the date of grant, the mark expires, upon the petition of a third party.

Nominal use: publication of advertisement in newspapers is considered as valid use only if the use takes place within the term of three months from the publication of advertisement.

Assignment: possible by a written deed certified by a Notary Public, duly signed by both parties; must be recorded at the Trademark Office.

Licenses: possible, must be recorded at the Trademark Office with a copy of the original document.

Modification of Protection after Registration

Prior user rights: no provision.

User right: trademark rights may only be gained through registration.

Opposition to registered marks and cancellation: possible, pursuant to Decree-Law No. 203, before the Patent and Trademark Office (OCPI).

Validation of invalidated marks: not possible.

Registration of invalidated marks: possible.

Infringement: civil and penal responsibility in the case of illicit use and usurpation.

Penalties: see “patents“.