General trademark information of Cuba

Registration is required to establish rights in a trademark; this is a "first to file" jurisdiction.

• Use of an unregistered mark for any goods or services is legal.

• No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

A. Time Frame for Obtaining Registration

• The approximate time from application to registration (for a regular prosecution, without opposition) is: 16 to 20 months until grant or refusal; around two years until issuance of the registration certificate.

B. Advantages of Registration

• The benefits of registering a trademark include the following:

• it is the sole means of obtaining rights or title to the trademark;

• it provides prima facie evidence of ownership and validity;

• it provides regional, national and/or local protection;

• it allows the registrant access to bring actions in particular courts;

• it helps to deter others from unlawfully using the trademark;

• it provides a defense to infringement;

• enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark (that is, the mark should have acquired well-known or notorious status);

• it confers the ability to recover maximum monetary damages for infringement;

• licenses can be granted and recorded only for registered trademarks.
  
  The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Cuba.

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:

• words;

• names;

• devices;

• certain three-dimensional shapes;

• colors (Colors are registrable only if circumscribed within a particular shape, or as combinations of colors.);

• slogans;

• sounds (Despite the fact that the law provides that sounds may be registered as trademarks, the Trademark Office does not have the means to process this kind of application. Therefore, in practice, sounds currently are not suitable for registration in Cuba.);

• smells (olfactory trademarks) (Despite the fact that the law provides that smells may be registered as olfactory trademarks, the Trademark Office does not have the means to process this kind of application. Therefore, in practice, smells currently are not suitable for registration in Cuba.);

• trade dress/get-up (Protection of trade dress can be accomplished by registering as trademarks those individual elements that are suitable for trademark protection (i.e., colors, devices, three-dimensional shapes).);

• holograms (Holograms can be registered as three-dimensional shapes.).

• The special requirements for the registration of three-dimensional shapes are: A clear drawing or photograph must be filed for each of the three dimensions of the shape. Additional drawings or photographs may be provided so that all the features of the shape are clearly depicted.

• The special requirements for the registration of colors are: Colors are registrable only if circumscribed within a particular shape, or as combinations of colors.

• There are no special requirements for the registration of sounds. However, despite the fact that the law provides that sounds may be registered as trademarks, the Trademark Office does not have the means to process this kind of application. Therefore, in practice, sounds currently are not suitable for registration in Cuba.

• There are no special requirements for the registration of smells. However, despite the fact that the law provides that smells may be registered as olfactory trademarks, the Trademark Office does not have the means to process this kind of application. Therefore, in practice, smells currently are not suitable for registration in Cuba.

• The special requirements for the registration of trade dress are: As a whole, trade dress as such cannot be protected. The individual elements comprised by trade dress may be registered separately, attending to the specific requirements of each distinctive sign (i.e., colors, designs, packaging shapes).

• The special requirements for the registration of holograms are: A clear drawing or photograph must be filed for each shape or image featured by the hologram. These marks are registered as three-dimensional shapes.

• There are no special requirements for the registration of motion. Registration of motion as such is not available in Cuba. If the elements in motion can be individualized in separate static drawings or designs, a registration could be obtained for each element, as device marks. If applicable, the element in motion could also be registered as a static three-dimensional shape.

• There are no special requirements for the registration of taste. Registration of trademarks over taste is not available in Cuba.

• There are no special requirements for the registration of touch. Registration of trademarks over touch is not available in Cuba.

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

• In addition to regular trademark registrations, the following types of trademarks are registrable:

• collective marks;

• well-known marks;

• service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified. Retail services are registrable within International Class 35 provided the applicant gives a due description of the goods to which the retail services refer. The specific goods to be commercialized must be duly described, and the phrase “a variety of goods” is not permitted.

• The following are not registrable as trademarks:

• marks contrary to moral standards or public order;

• generic terms;

• names, flags or symbols of states, nations, regions or international organizations;

• non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);

• marks that function principally as surnames;

• marks that function principally as geographic location names (but not georaphical indications or appellations of origin);

• names or pictures of official personalities, martyrs or national heroes without their consent.

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:

• special laws for the protection of geographical indications or appellations of origin;

• trademark laws, in the form of collective marks, available to entities that have their domicile within the relevant geographic area.

• The following products or categories are subject to GI protection in this jurisdiction: Any kind of product could be subject to GI protection, provided that such product originates from the country, region or zone described by the GI and that a given quality, reputation or other characteristic of the product is due mainly to its geographic origin.

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:

• save the applicant the time, effort and cost entailed in developing, adopting and applying to register a trademark in which someone else has prior rights.

• The results of the search may assist in defining the strategy to apply for the mark of interest (i.e., limitations, drafting of goods or services to be covered, etc.).

• The national office is accessible online at the following URL: http://www.ocpi.cu.

• The official register cannot be searched online.

• An applicant does not benefit from pre-filing use of a trademark. Pre-filing use of a trademark does not facilitate or expedite in any way the registration process; however, it may be useful if an opposition or litigation arises during the process, as it may help prove a better right over the mark.

• The benefits of pre-filing use are:
  • Use may demonstrate acquired distinctiveness (secondary meaning) and help to overcome an objection to an application to register the trademark on the ground of non-distinctiveness.

• When a mark is not registered, use of that mark may provide the following benefits:

• Courts may protect unregistered trademarks in some exceptional cases (well-known marks).

• Special protection against infringement may be available for a famous and/or well-known mark that is not registered.

• In Cuba it is considered that the exclusive right to use a mark is generated by its registration; therefore, use of a mark without registration does not constitute a valid right that the trademark owner could enforce against third parties, with very few exceptions.
  
  The most important of such exceptions is the following: use of a mark without registration can serve as a basis to oppose an application or to request the nullity (cancellation on nullity grounds) of a registration granted for an identical or confusingly similar trademark on behalf of a third party, only if said mark that has been previously used without registration is well known/has achieved notoriety. Said in other words: only unregistered marks that are notorious or well known in Cuba as a result of their extensive use by their owners can serve as a basis to oppose an application filed by a third party or to request the nullity of a registration granted to a third party for an identical or a confusingly similar mark – once the combatted application is rejected or the nullity is granted, the owner of the notorious mark can file an application to register the mark on its behalf.
  
  Notorious or well-known marks that are not registered can also be enforced against infringers.

• Famous and/or well-known marks are protected via the following mechanism(s):

• an administrative process (There is no specific process, certificate or decree issued by the Trademark Office to recognize the famous or well-known character of a mark in general. The character of a mark as famous or well known is reviewed by the Trademark Office at the owner's request during an opposition process against an application filed by a third party, or during a nullity action against a registration already granted on behalf of a third party. The resolution will contain the authority's decision on whether the mark is considered famous or well known within that process in particular. While this is not expressly a general or absolute recognition of the mark's fame or well-known status, it could be cited in future processes under similar circumstances regarding the relevant product/service.).

• Cuba is a member of the following international treaties relating to intellectual property:

• Paris Convention;

• Trademark Law Treaty (signed in 1994 but not ratified);

• Nairobi Treaty;

• Madrid Agreement;

• Madrid Protocol;

• Nice Agreement;

• Vienna Agreement;

• Lisbon Agreement.

• If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

• Joint applicants are permitted in this jurisdiction.

• Neither actual use nor intent to use is required for application.

• The following information is required to COMPLETE an application:

• name and address of applicant;

• state or country of incorporation;

• representation of trademark (a depiction of the mark an applicant seeks to register);

• list of goods/services;

• power of attorney;

• official filing fee;

• priority claim, where priority of an earlier application is claimed.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:

• name and address of applicant;

• representation of trademark (a depiction of the mark an applicant seeks to register);

• list of goods/services;

• power of attorney;

• official filing fee.

• The list of goods and services in this jurisdiction may specify:

• the relevant class heading;

• a list of names commonly used in the trade for the specific goods or services of interest;

• the relevant entire (long) alphabetical class listing.

• If the application covers the class heading, it is understood that it includes all the goods or services within such class. For some classes, such as Class 5, an additional clarification or description of the specific goods of interest may be requested by the Trademark Office.

• The relevant entire (long) alphabetical class listing is appropriate to use in applications for:

• goods and/or services.

• The following number of copies of the trademark must be submitted: for word marks in Latin characters, or comprising Arabic or Roman numbers: one specimen; for trademarks comprising a device, three-dimensional trademarks, or word marks in characters other than Latin or Arabic/Roman numbers: 20 specimens.

• Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
  • other: A POWER OF ATTORNEY IS A FILING REQUIREMENT IN MOST CASES: A power of attorney is not required when the applicant is allowed to act on its own behalf or to represent himself/herself before the Trademark Office and he/she chooses to do so. INDIVIDUALS Only Cuban individuals or foreign individuals with their domicile or with an effective industrial or commercial establishment in Cuba are allowed to represent themselves before the Trademark Office, and a power of attorney is not necessary if such applicants choose to occur by themselves instead of being represented by an agent or legal representative. THESE ARE THE ONLY CASES WHEN A POWER OF ATTORNEY IS NOT NECESSARY. On the other hand, foreign individuals who do not have their domicile or an effective industrial or commercial establishment in Cuba must necessarily be represented by an Industrial Property Agent and a power of attorney is required. ENTITIES As for entities, Cuban entities or foreign entities with their domicile or with an effective industrial or commercial establishment in Cuba must act through a duly appointed representative or through and Industrial Property Agent. A power of attorney is required. Foreign entities who do not have their domicile or an effective industrial or commercial establishment in Cuba must necessarily be represented by an Industrial Property Agent and a power of attorney is required.

• In this jurisdiction, the following types of registrations are available:

• national;

• international.

• This jurisdiction is a party to both the Madrid Protocol and the Madrid Agreement and may be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

• No multinational regional registrations are available in this jurisdiction.

• An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid System.)

• Applications cannot be filed online.

• The official file cannot be accessed online.

• Applications are officially searched as to prior trademarks.

• If an applicant's home country is a member of the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

• An International Registration can be based on a national application or registration in this jurisdiction.

• This jurisdiction uses the Nice Classification System.

• If a trademark is or will be used in more than one class of goods and/or services, one application can cover multiple classes of goods or multiple classes of services, but separate applications are also permitted. However, separate applications per class may not be cost-effective.

• For a multi-class application, the applicant must pay additional class fees if the goods/services fall into more than the following number of classes: three.

• An application to register a trademark may be filed directly in this jurisdiction by:

• the applicant, but only if a citizen of or domiciled in the jurisdiction;

• a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:

• through publication and online.

• The following application details are made available to the public:

• mark;

• name of applicant;

• address of applicant;

• application number;

• application date;

• goods/services;

• priority claim information;

• representation of trademark;

• classification of figurative elements according to the Vienna Classification.

• Applications are examined in respect of:

• formalities: i.e., for compliance with the filing requirements;

• classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;

• clarity: i.e., that descriptions are clear and understandable;

• descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;

• distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;

• deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality or geographic origin of the goods or services);

• conflict with prior registration, prior-filed application or earlier unregistered rights resulting from an official search.

• If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:

• The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

• The order of the application process is as follows:

• formal examination, publication, substantive examination, registration.

• Accelerated examination may not be requested.

• The following rights are established by a pending application:

• the filing date of the application establishes a home filing date for purposes of priority;

• the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;

• the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application.

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:

• proprietary rights, such as an earlier conflicting registration;

• the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;

• the mark is not distinctive;

• the mark is misleading, deceptive or disparaging;

• the mark is functional;

• breach of copyright;

• rights under Article 6bis of the Paris Convention (notorious or well-known mark);

• rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags and other State emblems);

• rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);

• rights under Article 8 of the Paris Convention (trade names);

• registered design rights;

• rights in a personal name;

• the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

• the mark consists of a geographical indication;

• the mark is against public policy or principles of morality.

• Please note: The Cuban Trademarks Law provides that "oppositions" can be filed only by the person or entity that holds or owns a prior right that would be affected if a given application filed by a third party were granted registration. The party that files the opposition on these grounds becomes a party in the registration process. It is therefore understood that only the owner or holder of a prior right can file an opposition based on the legal grounds or provisions specifically related to the detriment or damage to such prior right (i.e., an earlier conflicting registration, breach of copyright, registered design rights, rights in a personal name, etc.), but, in practice, any of the grounds listed immediately above could be considered during an opposition procedure.
  
  On the other hand, "observations" can be filed by any interested party. By this wording the Trademarks Law allows persons or entities that do not hold a prior right to file an observation writ based on those other grounds that do not necessarily imply the existence of a prior-registered right (i.e., the mark is misleading, the mark is functional, the mark is offensive or against principles of morality, or even against a mark that is generic or descriptive if its granting would prevent others from using a term that is customarily used to somehow describe the origin, composition or other characteristics of their goods or services, etc.). The person or entity that files an observations writ does not become a party in the registration process.

• An application is published for opposition purposes after formal examination of the application.

• The opposition period begins on the following date: The opposition period of 60 days begins/is counted from the publication date of the application in the Official Industrial Property Bulletin. The deadline is counted from the effective publication date, i.e., the date when the Bulletin is indeed put into circulation or made available to the public.

• The opposition period ends on the following date: upon the expiration of 60 days counted from the date on which the application was published.

• The following parties may initiate an oppostion:

• the owner of an earlier right;

• a licensee (only if registered before the Trademark Office as a licensee and if authorized by the licensor or trademark owner to oppose third parties' applications);

• the owner of a notorious mark in use, either registered or not registered.

• Oppositions cannot be filed online.

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

• An application can be assigned.

• A registration can be assigned.

• An assignment of an application must be made for the entire territory covered by the application. Trademark applications and registrations cover, without exceptions, the whole territory of the Republic of Cuba (national registration).

• An assignment of a registration must be made for the entire territory covered by the registration, i.e., the territory of the Republic of Cuba.

• An assignment of an application can be for some or all of the goods or services listed in the application.

• An assignment of a registration can be for some or all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:

• name of assignor;

• address of assignor;

• name of assignee;

• address of assignee;

• details of the trademark being assigned;

• goods and services being assigned;

• effective date of the assignment (if it is different from the date when the assignment document is signed or executed by the parties);

• signature by assignor;

• signature by assignee.

• An assignment document for a registration requires:

• name of assignor;

• address of assignor;

• name of assignee;

• address of assignee;

• details of the trademark being assigned;

• goods and services being assigned;

• effective date of the assignment (only when it is different from the date when the assignment document is signed or executed by the parties);

• signature by assignor;

• signature by assignee.

• Legal verification of a written assignment document of an application is not required.

• Legal verification of a written assignment document of a registration is not required.

• An assignment of an application must be recorded to be effective.

• An assignment of a registration must be recorded to be effective.

• An application cannot be licensed. Although a trademark at the application stage can in fact be licensed by its owner and be included in a license agreement, in Cuba it is not possible to record license agreements against trademark applications.

• A registration can be licensed.

• In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

• A license of an application can be made for a portion of the territory covered by the application. Not known

• A license of a registration can be made for a portion of the territory covered by the registration.

• A license of an application must be for all the goods or services listed in the application. Not known

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of an application can be exclusive (only one licensee, with the owner excluded).
• A license of an application can be sole (only one licensee and the owner). Not known
• A license of an application can be non-exclusive (multiple licensees and the owner). Not known

• A license of a registration can be exclusive (only one licensee, with the owner excluded).

• A license of a registration can be sole (only one licensee and the owner).

• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a mark that is the subject of an application need not be licensed. It is not possible to record license agreements in connection with trademark applications not granted into registration yet.

• Use, by a related company, of a registered mark need not be licensed, but it will have effect against third parties only if it is made formal in the form of a license and the license agreement is recorded before the Trademark Office.

• A license of an application cannot be made with a time limitation. Voluntary licenses have a 10 year duration

• A license of a registration can be made with or without a time limitation.

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;

• A license document for a registration requires:

• name of licensor;

• address of licensor;

• name of licensee;

• address of licensee;

• details of the trademark to be licensed;

• goods and services being licensed;

• term of the license;

• territory of the license;

• simple signature by licensor (see below for execution requirements);

• simple signature by licensee (see below for execution requirements).

• Legal verification of a written agreement to license an application is required by:

• A license of an application must be recorded to legitimately control use by and obtain royalties from the licensee.

• A license of a registration need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license. While a license of a registration need not be recorded to be effective between the parties, the law provides that license agreements must be recorded before the Trademark Office to be effective against third parties, and will have effect against such third parties only from the date of the recordal.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is not required.

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:

• power of attorney, without further formalities;

• deed of assignment, without further formalities;

• certificate of proof of change of name, without further formalities;

• certificate of merger, without further formalities.

• All documents submitted in a foreign language must be filed ltogether with a Spanish translation.

• The requirements regarding the recordal of updated addresses on trademark records are as follows: No documents are required to record a change of address. It is only necessary to provide the former address as recorded, and the new address.

• The requirements for recording liens against trademark records, such as security interests, are as follows: An original or certified copy of the document attesting the existence of the relevant lien must be filed. No legalization is required. All documents submitted in a foreign language must be filed together with a Spanish translation.

• A fee is required for issuance of the registration.

• The following documentation is required for issuance of the registration:

• none.

• The following rights are established by registration:

• the exclusive right to use the registered trademark;

• the right to oppose subsequent conflicting applications;

• the right to bring a cancellation action against a subsequent conflicting registration;

• the right to sue for infringement against confusingly similar third-party trademark use;

• the right to license third parties to use the trademark;

• the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;

• the right to obtain damages for infringement.

• Some of the rights mentioned above are not established EXCLUSIVELY by registration. For example:
  
  (a) The right to oppose subsequent conflicting applications is established by a prior filing date, even though the mark that will be used as the basis for the opposition may still be at an application stage. Thus, the owner of a trademark application that has not yet been registered is entitled to oppose an application filed by a third party at a later date.
  
  (b) The owner of a well-known or notorious mark that has not been registered has the right to file oppositions against subsequent conflicting applications, to file cancellation actions on nullity grounds against conflicting registrations, and to combat infringement.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:

• never. The Cuban Trademarks Law establishes a difference between two actions that may challenge the validity of a trademark registration: (a) nullity (or cancellation on nullity grounds) and (b) cancellation in strictu sensu.
  
  Nullity, or cancellation on nullity grounds of a trademark registration, can be ruled by the Trademark Office when a trademark registration was granted against any of the requirements established by law; when such registration was granted on the basis of false or inaccurate statements; and/or if the registration was granted for a mark that is identical or confusingly similar to a mark that is the subject of a prior application or registration in the name of a third party, or to a trademark that is notorious or well known in Cuba, and is applied to identical or confusingly similar goods or services, causing a likelihood of confusion or risk of association among consumers.
  
  The nullity process against a trademark registration can be initiated by an interested party or ex officio by the Trademark Office at any time during the validity of a trademark, which means that a trademark would never become incontestable if any of the aforementioned circumstances or due causes for nullity were present when registration was granted.
  
  On the other hand, a cancellation action in strictu sensu can be initiated against a registration if such registration is an element related to monopoly or unfair competition activities causing severe distortions to the production, distribution or commercialization of certain goods or services; when such registration hinders the effective distribution, production or commercialization of goods or services in the territory of Cuba; if it is harmful or damaging to the interests of the national economy; or when the mark has suffered a generalization or dilution process and has become the generic or usual designation of the products or services that it was originally intended to distinguish.
  
  The cancellation process against a trademark registration can be initiated by any interested party within five years counted from the moment when the facts or circumstances giving rise to the cancellation are known by such interested party (hard to prove), or ex officio by the Trademark Office at any time during the validity of a trademark, which means that a trademark would never become incontestable if any of the aforementioned circumstances or due causes for cancellation were present.

• The territorial limit of registration is: the Republic of Cuba.

• The initial term of a registration is:

• 10 years.

• The beginning of the term of a registration is calculated from:

• the application date.

• Marking is not compulsory for registered trademarks, but is advisable because: it may help to make the public notice that the mark has been registered and is legally owned by a given person or entity, discouraging non-authorized use.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.

• ®;

• Marca Registrada (translation in Spanish of "Registered Trademark") and its abbreviation M.R.

• The use of ® is not legally recognized.

• The legal consequences of false or misleading marking are: The perpetrator could face infringement actions pursuant to the Cuban Trademarks Law or other regulations for the protection of consumers and against unfair competition.

• Attack on the ground of non-use is available.

• To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time: within three years counted from the registration date. Furthermore, use should not be interrupted for more than three consecutive years during the validity of the trademark; otherwise, the registration is vulnerable to cancellation on grounds of non-use.

• To satisfy the use requirement, the amount of use:

• should be made through distribution channels and commercial means, or the goods/services should be made available to end consumers within the territory of Cuba in a continuous manner and in the quantity and ways that would normally correspond to those given goods or services, taking into account the market dimmension, the nature of the goods or services, and the modalities under which their commercialization is usually made.

• Use of the trademark must occur in:

• this jurisdiction. Use of the mark on goods only for export purposes from the territory of Cuba, or to identify services rendered abroad from the territory of Cuba, is also considered valid use.

• The consequences of a trademark's not being used are as follows: The mark would be vulnerable to be cancelled on grounds of non-use if it is not used for a period of three consecutive years during its validity.

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:

• the trademark office, "ex officio";

• any interested third party.

• Non-use can be excused under the following circumstances:

• import restrictions;

• other government policies;

• difficulties obtaining permissions, or other important and actual causes that have made it impossible for the owner to use the mark in the territory of Cuba. This is at the sole discretion of the authority.

• Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:

• filed an action for cancellation of the trademark on the ground of non-use; or unless such resumed use has not been performed for more than three months by the time when a cancellation action is filed.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney. The distinctive sign (words, devices, colors, etc.) cannot be altered after the application is filed (the application date would be modified); furthermore, there is absolutely no possibility to modify the sign after registration has been granted. Therefore, modifying the mark after it has been registered, even if intended to conform to a new, modified variation, is not possible, and a new application should be filed.

• Cancellation is available against registrations.
  
  As previously mentioned, the Cuban Trademarks Law establishes a difference between two actions that may challenge the validity of a trademark registration: (a) nullity (or cancellation on nullity grounds) and (b) cancellation in strictu sensu. The points of information discussed in this section consider the provisions applicable to both kinds of cancellation actions; however, please also be aware of the following:
  
  Nullity, or cancellation or nullity grounds, of a trademark registration can be ruled by the Trademark Office when a trademark registration was granted against any of the requirements established by law; when such registration was granted on the basis of false or inaccurate statements; and/or if the registration was granted for a mark that is identical or confusingly similar to a mark that is the subject of a prior application or registration in the name of a third party, or to a trademark that is notorious or well known in Cuba, and is applied to identical or confusingly similar goods or services, causing a likelihood of confusion or risk of association among consumers.
  
  The nullity process against a trademark registration can be initiated by an interested party or ex officio by the Trademark Office at any time during the validity of a trademark, which means that a trademark would never become incontestable if any of the aforementioned circumstances or due causes for nullity were present when registration was granted.
  
  On the other hand, a cancellation action in strictu sensu can be initiated against a registration if it is an element related to monopoly or unfair competition activities causing severe distortions to the production, distribution or commercialization of certain goods or services; when such registration hinders the effective distribution, production or commercialization of goods or services in the territory of Cuba; if it is harmful or damaging to the interests of the national economy; or when the mark has suffered a generalization or dilution process and has become the generic or usual designation of the products or services that it was originally applied to distinguish.
  
  The cancellation process against a trademark registration can be initiated by an interested party within five years counted from the moment when the facts or circumstances giving rise to the cancellation are known by such interested party (hard to prove), or ex officio by the Trademark Office at any time during the validity of a trademark, which means that a trademark would never become incontestable if any of the aforementioned circumstances or due causes for cancellation were present.

• The following can be grounds for cancellation:

• the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;

• the mark is not distinctive;

• the mark is misleading, deceptive or disparaging;

• the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

• the mark consists of a geographical indication;

• the mark is against public policy or principles of morality;

• the mark includes a badge or emblem of particular public interest;

• the application for or registration of the mark was made in bad faith.
  
  See Section VII.A. Use Requirements.
  
  Also please see immediately above for a discussion of the distinctions between cancellation on nullity grounds and cancellation in strictu sensu.

• There is no deadline for bringing a cancellation action; a cancellation action can be brought at any time. Please see above for a discussion of the distinctions between cancellation on nullity grounds and cancellation in strictu sensu.

• The following parties may bring a cancellation action:

• any interested party;

• the owner of an earlier right;

• a licensee (only if recorded before the Trademark Office as a licensee and if authorized to do so by the licensor or trademark owner in the license agreement).

• Cancellation actions cannot be filed online.

• The following documentation is required for renewal:

• power of attorney (only in the event that the representative or agent who files the renewal application is different from the one who originally filed the trademark application);

• none, if the representative or agent who files the renewal application is the same as the one who originally filed the trademark application.

• The first renewal date of a registration is:

• 10 years from the application filing date.

• Subsequent renewals last for the following period of time:

• 10 years from the renewal date of the registration.

• The renewal pre-payment period is:

• no more than the following number of months before the renewal date: 6 months.

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:

• 6 months.

• The penalty for late renewal is:

• a fine (if the late renewal application is filed within the six-month grace period);

• the registration lapses (if the late renewal application is not filed within the six-month grace period).

• Renewal cannot be effected online.

• At the completion of renewal, a new registration number is not issued.

• There is no mechanism for recording trademarks that are registered in this jurisdiction with the customs authority.

• A domain name may be protected as a trademark only if the domain name is not merely a Web address but is used or intended to be used in connection with goods or services.
  
  Registration as a trademark of a domain name such as www.domain.com is absolutely not possible.
  
  Domain names such as domain.com (without www) have been granted by the Trademark Office on very few occasions in the last 20 years, some of them via the Madrid Agreement or the Madrid Protocol.
  
  Notwithstanding the fact that there are some registrations for this kind of trademark, the current dominant criterion is that exact references to a domain name cannot be registered as a word mark unless the applicant disclaims exclusive rights over the .com element, and nowadays very few of these applications mature into registration since most of them are considered as devoid of distinctive character and/or descriptive when the services they cover are related to online communication or publicity, or online retail services (as most of them are).
  
  Apparently, examiners would be willing to grant registration of marks such as domain.com as far as they include a disclaimer of the .com element and include a device, as well as satisfy the usual distinctiveness requirements. This leads us to conclude that, to comply with the authority’s current criterion, the domain name should be altered in such a way that it becomes a regular word mark or a device mark and ceases to be a domain name, strictly speaking.

• The following approved registrars can register a domain name in this jurisdiction: Centro Cubano de Informacion de Red, CUBANIC.

• Availability of domain names in this jurisdiction can be searched through the following website(s): www.nic.cu.

• The Country Code Top-Level Domain (ccTLD) for this jurisdiction is: ".cu."

• To obtain a domain name under the ccTLD in this jurisdiction, there are no requirements of locus with this jurisdiction, such as a local address or local business activity.

• Domain name registrations can be assigned.

• Domain name registrations can be licensed. However, it is not possible to record a license agreement over a domain name before the registrar, CUBANIC.

• A domain name registration may be contested in this jurisdiction through the following mechanisms:

• a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through an ICANN-approved domain-name dispute resolution service provider (see http://www.icann.org/en/help/dndr/udrp).

• the following other mechanisms, whether local dispute resolution mechanism or otherwise: national arbitration and mediation organisms.

• One may institute a UDRP proceeding with the following ICANN-approved domain-name dispute resolution service providers to contest a domain name registration in this jurisdiction:

• World Intellectual Property Organization (WIPO).

• Once a registration lapses as a result of failure to renew, it cannot be revived or restored. The alternative available is to request a new registration, provided the domain name is still available and has not been recorded by another entity in the meantime.

• The application to register a domain name as a trademark will be examined for conflicts with prior trademarks. This is technically true, but please be aware of the following:
  
  Registration as a trademark of a domain name such as www.domain.com is absolutely not possible.
  
  Domain names such as domain.com (without www) have been granted by the Trademark Office on very few occasions in the last 20 years, some of them via the Madrid Agreement or the Madrid Protocol.
  
  Notwithstanding the fact that there are some registrations for this kind of trademark, the current dominant criterion is that exact references to a domain name cannot be registered as a word mark unless the applicant disclaims exclusive rights over the .com element, and nowadays very few of these applications mature into registration since most of them are considered as devoid of distinctive character and/or descriptive when the services they cover are related to online communication or publicity, or online retail services (as most of them are).
  
  Apparently, examiners would be willing to grant registration of marks such as domain.com as far as they include a disclaimer of the .com element and include a device, as well as satisfy the usual distinctiveness requirements. This leads us to conclude that, to comply with the authority’s current criterion, the domain name should be altered in such a way that it becomes a regular word mark or a device mark and ceases to be a domain name, strictly speaking.

• An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another. But please see immediately above regarding the registration of domain names.

• In general, the courts apply the same principles to domain name disputes as are applied to trademark disputes. To be clear, the courts would apply the principles that are applied to trademark disputes to those disputes involving domain names registered as trademarks. Also see above regarding the registration of domain names.

If you would like to know the trademark registration process of Curacao ? Click on here!

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