Cuba passes new law to comply with TRIPs
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Cuba has passed a new trademark law as a result of its accession to the World Trade Organization and to comply with the requirements of the Agreement on Trade-Related Aspects of Intellectual Property Rights. The most important changes introduced by the new law are as follows:
- The definition of 'trademark' has been broadened to include any distinguishable sign, including words, devices, letters, numerals, three-dimensional objects, combination of colours, sounds and scents. Also, the law provides for protection of commercial names and slogans, and establishment emblems and labels. Besides legal entities, natural persons can now register trademarks.
- Trademark rights are obtained through registration on a first-to-file basis. Nevertheless, the law establishes protection for famous trademarks. Co-ownership of trademarks is allowed.
- A single application can cover up to three classes. Protection is granted for 10 years from the date of filing. Renewal of a registration can be requested up to six months after expiration.
- A formal examination is carried out before publication to confirm that the application fee has been paid and that all of the documentation is in order. Third parties may file observations or oppositions within two months of publication. If no observation or opposition is filed, the director of the Trademark Department will issue a conclusive exam report granting or rejecting the trademark.
- The applicant has one month to reply to a filed opposition or observation. The director of the Trademark Department will issue a decision regarding the allowance of the application at the end of the one-month period.
- The applicant or opponent can file an appeal against the director's decision within 30 days of its notification. When presenting the grounds of appeal, the applicant can also modify the application in order to overcome the objections raised by the director or opponent. The decision issued then by the director is final and ends the administrative instance. Such decisions can only be contested by filing an action before the Civil and Administrative Court of Havana.
- Under certain circumstances, an applicant or trademark owner who lost its trademark rights after missing a deadline can regain those rights by filing a 're-establishment of rights' application before the Industrial Property Office.
- If the trademark is not used within three years of registration, the registration can be cancelled. If a trademark was in use for only some of the goods or services, the cancellation will not affect the goods or services for which use can be shown.
- Trademark registrations may be cancelled or annulled by third parties or by the Industrial Property Office ex officio.
- Trademarks can be assigned for all the goods or services or for only certain goods or services. If a trademark is only partially assigned, a new trademark registration is granted to the assignee.
- Licences can be exclusive or non-exclusive. If a licence is exclusive, the licensee can take action against infringers without the consent of the licensor.
- A trademark owner can file a civil action before the Civil Administrative and Labour Court against any infringement. The trademark owner can request the judge to order the cessation of the infringing actions, seizure of the goods, and indemnification for damages. If two or more people own a trademark, each can separately file a civil action without the consent of the other owner(s), unless stipulated otherwise.
- The trademark owner may request a preliminary injunction in an infringement case. The injunction may be granted to prevent the infringement from taking place, to order the end of acts that constitute infringement, to order the seizure of materials that bear the infringing trademark or that will be used for the infringement, and to stop the importation or exportation of goods bearing the infringing mark. These precautionary measures may be requested before filing the action for infringement.
Ladas & Parry, New York
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