Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

Cuba’s primary trademark legislation is Decree Law 203 on Trademarks and Other Distinctive Signs.

International law

Which international trademark agreements has your jurisdiction signed?

Cuba has signed the following international trademark agreements:

  • the Madrid Agreement and Protocol;
  • the Nice Agreement;
  • the Paris Convention;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights;
  • the Trademark Law Treaty;
  • the World Intellectual Property Organisation Convention;
  • the Vienna Agreement;
  • the Nairobi Treaty; and
  • the General Inter-American Convention for Trademark and Commercial Protection.

Regulators

Which government bodies regulate trademark law?

The Cuban Industrial Property Office (OCPI) regulates trademark law in Cuba. The OCPI is an arm of the Cuban Ministry of Science, Technology and Environment.

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Cuba is a first-to-file jurisdiction, with the exception of Paris Convention priority registrations, which may be filed later but have an earlier priority date. That said, Cuba recognises limited rights in commercial names, entrepreneurial emblems and signs for establishments on a first-to-use basis. These rights are related to trademarks and are governed by the same principal legislation as trademarks.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

In general, Cuban law does not provide protection to unregistered trademarks. However, the owner of an unregistered mark that has been used at an officially sanctioned exposition can claim priority to the date of that use, under certain circumstances, provided that the use was no more than six months before the application to register the mark. An unregistered mark can also be afforded Paris Convention priority.

Limited protection is available to unregistered, famous marks and fame may serve as the basis for an opposition or revocation action.

Finally, a number of non-trademark, sui generis rights exist that may protect an unregistered mark – namely, the protection of:

  • commercial names;
  • entrepreneurial emblems; and
  • an establishment’s sign.

These rights spring from first use in commerce.

How are rights in unregistered marks established?

As mentioned, few rights in unregistered trademarks exist in Cuba. However, such marks may be protected not as a trademark per se, but rather under several sui generis rights outlined in the trademark legislation. These rights – namely, the protection of commercial names, entrepreneurial emblems and an establishment’s sign – are established via first use in commerce and are registerable.

Unregistered, famous marks may also provide some limited protection in opposition or revocation proceedings. To establish these rights, the trademark owner must institute the proceedings.

Are any special rights and protections afforded to owners of well-known and famous marks?

A well-known mark in Cuba can serve as a relative ground for refusal of an application. Well-known status can also be used as grounds for a nullity action. Finally, acquisition of well-known status can serve as a defence against cancellation.

Well-known status is determined by what is well-known among Cuban consumers, which often differs from among the rest of Latin America (due to political concerns) and can create significant evidentiary challenges.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Foreign trademark registrations can serve as the basis for a Paris Convention priority application. In addition, the General Inter-American Convention for Trademark and Commercial Protection provides some protection for foreign trademarks known to the applicant of a Cuban mark, provided that the applicant is a national of another jurisdiction that is party to the convention.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

The owner of a registered trademark has the exclusive right to use that mark in commerce, including:

  • sales;
  • imports;
  • exports; and
  • advertisements.

A trademark owner can prevent third parties from:

  • using its mark in commerce;
  • displaying the mark on goods or packaging;
  • producing packaging containing the mark; and
  • removing or modifying a mark previously applied to goods.

Under certain circumstances, the risk of confusion will be presumed by law.

Who may register trademarks?

Trademark registrations are available to natural people and business entities – both Cuban and foreign.

What marks are registrable (including any non-traditional marks)?

The following are registrable under Cuban law:

  • word marks;
  • design marks;
  • combined word and design marks;
  • three-dimensional marks;
  • scent marks; and
  • sound marks.

The law also permits colour design marks, but specifies that a colour alone cannot be registered as a trademark.

Can a mark acquire distinctiveness through use?

Yes. An otherwise non-distinctive mark can be registered when it has acquired distinctiveness through the applicant’s use in Cuba.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

The absolute grounds for refusal are as follows:

  • The mark lacks distinctiveness.
  • The term is considered a generic, scientific or technical name for the goods or services.
  • The sign describes or qualifies the goods or services.
  • The mark is a functional aspect of the goods or their packaging, or a functional aspect that provides an advantage to the goods, even if not necessary.
  • The mark is geographically misdescriptive or otherwise deceptive.
  • The mark consists solely of a colour.
  • The mark contains a flag, crest, name or other indicator of Cuba, a foreign nation or an international organisation, without permission for use.
  • The mark contains the name of a protected plant variety.
  • The mark includes disparaging elements.
  • The mark is otherwise contrary to Cuban law or detrimental to morality or public order.

A trademark can acquire distinctiveness to overcome the absolute grounds of lack of distinctiveness or descriptiveness.

The relative grounds for refusal are as follows:

  • Identical marks are registered for the same goods or services.
  • There are identical or similar marks for identical goods or services, if the registration causes a risk of confusion.
  • The mark is identical or similar to a protected commercial name, sign or entrepreneurial slogan, if the registration causes a risk of confusion.
  • The mark causes a risk of confusion with, dilution to or unfair use of a famous mark.
  • The mark affects the personality rights of a third party which has not given consent.
  • The mark affects the goodwill of a business or governmental entity, without its consent.
  • The mark risks confusion or implies unfair use of a protected geographical indication.
  • The mark infringes an author’s rights or another’s industrial property.
  • The mark is used in bad faith.

Are collective and certification marks registrable? If so, under what conditions?

Collective trademarks are available and can constitute a geographical indication, if the applicants are domiciled in the relevant geographical area. Applicants must supply the bylaws outlining:

  • the conditions for using the mark;
  • a list of authorised users;
  • the conditions for being a member of the relevant association; and
  • any circumstances in which a member could be prohibited from using the mark.

The bylaws must allow any compliant person to join the relevant association. Collective marks cannot be transferred, except on merger or spinning off of the prior owner.

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

An authorisation of agent form is required for registration of a mark in Cuba. The form need not be notarised or legalised and original copies are not required (ie, emailed scans are sufficient).

What information and documentation must be submitted in a trademark registration application?

Applicants must submit:

  • an application signed by a Cuban counsel;
  • sufficient copies of representations of the mark;
  • a declaration of goods and services for the mark; and
  • an authorisation of agent form.

If the applicant claims priority via the Paris Convention, it must submit an additional, corresponding form and a certified copy of the original application, translated into Spanish if necessary.

What rules govern the representation of the mark in the application?

If the trademark is a word mark and consists only of Latin alphabet letters, Roman numerals or Arabic numerals, the applicant need only submit one representation of the mark. For figurative marks, mixed figurative and word marks, three-dimensional marks or word marks containing characters other than specified above, the applicant must submit 20 representations of the mark. A number of common typographic marks will result in a word mark being considered a figurative mark. For example, the use of ‘@’ or ‘&’ will not be considered a simple word mark.

Are multi-class applications allowed?

Yes.

Is electronic filing available?

No.

What are the application fees?

The official fee for a trademark application in Cuba is $390 for marks covering up to three classes. Additional classes cost an additional $100 each.

Priority

How are priority rights claimed?

In order to claim Paris Convention priority, an applicant must declare to the Cuban Industrial Property Office (OCPI) the number, date and office of filing of the relevant application. The applicant must also submit a certified copy of the application, translated into Spanish if necessary. Moreover, if the applicant is not the original applicant abroad, it must provide sufficient documentation regarding the assignment of rights to it.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Searches are available, but not required, before filing. Searches of registered trademarks and applications are available to the public via counsel. A search is performed by the registry on the basis of a written request by counsel and on payment of a $50 fee per class searched.

Examination

What factors does the authority consider in its examination of the application?

On its initial, formal examination, the OCPI will verify that local counsel is qualified to present the application and that the required documents have been submitted. Formal examination then proceeds to determine whether:

  • the proper reproductions of the mark have been submitted;
  • the goods and services claimed in the application have been properly enumerated and classified in accordance with the Nice system; and
  • the proper Paris Convention priority documents have been submitted, if applicable.

After a successful formal examination, the application is published for observation or opposition. After the opposition period ends, the OCPI will commence a substantive review, in which the examiner will consider:

  • the absolute and relative grounds for refusal;
  • any oppositions or observations submitted; and
  • the propriety of any priority claims made.

As a part of the examination, the examiner will search the registry and other appropriate sources for prior rights. The examiner will also consider issues relating to:

  • famous marks;
  • copyright; and
  • personality rights. 

Does the authority check for relative grounds for refusal (eg, through searches)?

Yes. The substantive examination of a mark will consider prior registered marks and applications when considering the relative grounds for refusal.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Yes. During both the formal and substantive examination periods, the registry may issue official actions. The applicant will have an opportunity to amend its application or submit alternative evidence or claims in order to rectify the application. The applicant will have 60 days to reply to official actions when issued upon formal examination and 30 days when issued upon substantive examination. Extensions of these deadlines is possible.

Can rejected applications be appealed? If so, what procedures apply?

Yes. Applicants can appeal a decision to the general director of the OCPI. If the appeal is unsuccessful, the rejection becomes final. The applicant may then appeal the rejection to the Provincial Court of Havana.

Registration

When does a trademark registration formally come into effect?

A Cuban trademark registration, once granted, is effective from the earlier of the application date or, if applicable, the priority date. Priority can be based on either the Paris Convention or national legislation concerning the exhibition of goods at officially sanctioned events before a trademark application.

What is the term of protection and how can a registration be renewed?

Cuban trademarks are effective for 10 years. The initial term is counted from the application date, even if priority rights were claimed. Subsequent renewals are available in perpetuity for 10-year terms, provided that the owner meets the renewal obligations. The registry will renew the mark on application for renewal and payment of the associated fee. The rights holder may reduce, but not enlarge, the classes and specifications relating to the mark on renewal. Renewal applications must be submitted in the six-month period preceding the renewal date. A six-month grace period also exists, but a late renewal fee is then required.

What registration fees apply?

The official fee for an application covering up to three classes is $300. Each additional class incurs a fee of $100. Following a successful examination, an additional fee of $90 must be paid to complete the registration. If the additional fee is not paid, the mark will be deemed abandoned.

What is the usual timeframe from filing to registration?

Due to an increase in the volume of filings and other registry actions, in recent years, the registration of a Cuban trademark has taken approximately two to three years, provided that there is no opposition or official action.    

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Yes, third parties can oppose trademark applications. Because the publication of an application occurs between the formal and substantive examinations, any opposition submitted is considered by the registry during the substantive examination. An opposition must be submitted within 60 days of the publication of the mark in the Official Bulletin of Industrial Property. The third party can base its opposition on any of the absolute or relative grounds for refusal and may also submit evidence with the opposition. The applicant may reply to the opposition with arguments and evidence within 30 days of receiving the third party’s submission.

What is the usual timeframe for opposition proceedings?

As an opposition is considered concurrently with the substantive examination, there is no specific timeframe. However, in recent years, the substantive examination of opposed trademarks has taken approximately three years from the end of the opposition period.

Are opposition decisions subject to appeal? If so, what procedures apply?

Yes, opposition decisions can be appealed. As the opposition is considered alongside the substantive examination, the single decision can be appealed by either the applicant or the third party. In the first instance, an appeal must be made to the general director of the OCPI within 30 days of notification of the registry’s decision. A further appeal can be made to the courts within 30 days of notice of the general director’s decision.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Non-use cancellation is possible and the relevant non-use term is three years from the registration date. A third party may commence a non-use cancellation action by filing a writ with the Cuban Industrial Property Office (OCPI) setting forth the arguments and evidence. Moreover, a fee must be paid to file the non-use cancellation action. Non-use cancellation can be limited to certain goods or services. The cancellation is effective on the date that the OCPI issues its decision. A party seeking cancellation will be granted a three-month window in which to apply for the mark, if cancellation is granted. Alternatively, the OCPI can initiate a non-use cancellation sua sponte.

Rights holders should also consider the following:

  • A licensee’s use inures to the owner’s benefit.
  • Use for three consecutive months before a non-use action is a defence to the non-use cancellation action, even if use began more than three years from registration.
  • A legal justification for non-use serves as another potential defence.

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

A trademark can be revoked through:

  • a nullity action;
  • a cancellation action; or
  • a non-use action.

Nullity actions

Nullity actions can be based on:

  • bad faith or fraud in the application process;
  • the risk of confusion with a prior registered mark or prior famous mark; or
  • claims that the registration approval was in contradiction of the trademark decree law (ie, the primary legislation).

When a mark is revoked on nullity grounds, it is treated as void ab initio.

Cancellation actions

Cancellation actions can be based on the mark becoming a generic term or having adverse effects on the Cuban economy, including:

  • creation of a monopoly or similar anti-trust issues;
  • unfair competition;
  • distortion of production or distribution of the goods; or
  • a general harm to the national economy.

When a mark is revoked on cancellation grounds, it is void from the time of declaration.

Non-use actions

Non-use cancellations can be based on a trademark owner’s failure to use the registered mark. When a mark is revoked on non-use grounds, it is void from the time of declaration.

Who may file a request for revocation and what is the statute of limitations for filing a request?

Revocation proceedings can be initiated by the OCPI (on information from another state authority or sua sponte) or a third party (either a natural person or body corporate). If instituted by a third party, cancellation actions (ie, those based on economic concerns or a loss of distinctiveness) have a five-year limitation period from the date on which the grounds for cancellation arose. Nullity actions (ie, those based on other grounds) have no limitation period. Either action can be brought at any time during the lifecycle of the mark (ie, the mark never becomes incontestable).

What are the evidentiary and procedural requirements for revocation proceedings?

To initiate revocation proceedings, a third party must file a writ with the OCPI setting forth the reasons, arguments and evidence for the revocation, and must pay the appropriate fee. The registrant will have an opportunity to respond to the third party’s submission or an OCPI-initiated proceeding. The OCPI can also attempt to mediate the issue between the parties. Actions can be enforced against partial goods and services covered by the mark if necessary.

Appeal

What is the appeal procedure for cancellations or revocations?

An appeal can be brought in the Provincial Court of Havana within 30 days of the adverse decision.

Surrender

What is the procedure for surrendering a trademark registration?

A party seeking to surrender a mark, fully or partially, must submit a notarised and legalised request to the OCPI. If a third party’s registered rights are affected by the surrender (eg, a licensee), then the trademark owner must affirm that it has informed that party of its intention to renounce the right.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Trademark disputes must be filed in the appropriate division of the Popular Provincial Court.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Civil infringement actions are available. However, under certain circumstances, the prosecutor can institute civil proceedings – namely, where there is a social or state interest.

Who can file a trademark infringement action?

Trademark owners and co-owners can bring an action for infringement, and a licensee can bring an action, if permitted by the terms of a recorded licence. A prosecutor may bring an action if there is a social or state interest. A union or similar group can bring an action when deemed legitimate.

What is the statute of limitations for filing infringement actions?

The limitations period is five years from the time of the last infringement.

What is the usual timeframe for infringement actions?

 Infringement actions typically last approximately one year, not considering any appeals.   

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

A party moving for an injunction must demonstrate:

  • the existence of its rights and power to enforce such rights;
  • evidence of the infringement or eminent infringement; and
  • that delay would cause irreparable harm or increasing damage.

The party’s counsel should also identify any goods involved. The plaintiff must post a sufficient bond, as determined by the court. An injunction can be granted ex parte if a hearing would frustrate the purposes of granting the injunction. Injunctions will expire after 20 days unless an infringement action is brought during that 20-day period.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

Cuban legislation provides the following remedies for trademark infringement:

  • a permanent injunction;
  • compensatory damages;
  • special damages;
  • seizure of:
    • infringing goods;
    • packaging;
    • publicity materials; or
    • tools of infringement;
  • an injunction prohibiting the import or export of the infringing goods, related materials or tools of infringement;
  • an order to deliver up or destroy goods, packaging or tools of infringement; and
  • moral damages.

When determining special damages, the court will consider:

  • the plaintiff’s lost profits;
  • the defendant’s unjust enrichment; and
  • the price that the defendant would have paid for a licence.

The law does not specifically authorise punitive damages, but does provide for moral damages, which can serve as an alternative to punitive damages.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

In an infringement action, the court can order the halting of the import or export of infringing goods, as part of either a preliminary or a permanent injunction. The moving party is required to post a sufficient bond to receive a preliminary injunction.

Alternatively, a provincial court action can be brought specifically to confiscate goods at the border. In these cases, a bond is required but the plaintiff need not meet the higher burdens of obtaining a preliminary injunction. However, the plaintiff must institute an infringement action within 10 days or seek an extension to avoid the goods being released from customs enforcement. This provision is not applicable to non-commercial goods that are carried for personal use in small quantities.

Defence

What defences are available to infringers?

In addition to negating the plaintiff’s case, an alleged infringer can raise the following defences:

  • statute of limitations;
  • exhaustion of rights; or
  • that it, in good-faith:
    • used its name or address;
    • described certain characteristics of the goods or services; or
    • described certain elements relating to accessories or spare parts.

Appeal

What is the appeal procedure for infringement decisions?

Provincial court rulings can be appealed before the People’s Supreme Court, but the court has discretion in hearing this class of appeals.

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

A request from registered counsel for the trademark owner accompanied by an original or certified copy of the assignment documents (with a simple Spanish translation, if applicable) and the prescribed fee is sufficient to record an assignment of trademark rights. A registration can be divided between two owners upon a partial assignment. Unrecorded assignments have no legal effect against third parties.

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Trademark licences are non-exclusive unless explicitly agreed otherwise. Licences can be limited to certain goods or services. Licence agreements must be recorded with the Cuban Industrial Property Office (OCPI) to have legal effect against third parties. The OCPI will refuse to record licences that are illegal or could prejudice the Cuban economy.

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

If a licence is exclusive, it must explicitly state so, as the default rule is that licences are non-exclusive. The licence should also address which parties may defend the trademark from revocation actions, as a non-exclusive licensee has no right to do so without the owner’s consent. In order to defend a mark, an exclusive licensee must show that the trademark owner’s failure to defend the mark was a breach of the licence agreement.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

The Trademark Act does not provide for registering a security interest in a trademark registration.

Related rights

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes. Some trademark rights may be protected as copyrights or designs, or under the sui generis rights relating to:

  • commercial names;
  • entrepreneurial emblems;
  • commercial slogans; and
  • establishment signs.

Online issues

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

There is no special legislation relating to the use of trademarks online; the general trademark law is applicable in this context. Domain name disputes are subject to the Internet Corporation for Assigned Names and Numbers Uniform Domain Name Dispute-Resolution Policy. Cuba’s country code top-level domain is ‘.cu’ and second-level domains (eg, ‘.com.cu’ and ‘.edu.cu’) also exist.