Trade mark trolls in Cuba: an update

Cuba

Back in 2015 the IPKat hosted an interesting report by Jaime Ángeles (Angeles Pons) on the problem of trade mark trolls in Cuba. 

Jaime has now prepared an update on the situation. Here's what he writes: 

"In a post in March 2015 we discussed how the Cuban trade mark system had been invaded by numerous trade mark applications (at least 90 fillings, although the actual number might be around 100) by NON-owners of signs similar to registered US trade marks, most of them very well-known (and some including words and designs alike). Applicants have been Cuban citizens, US companies, and even Dominican Republic citizens.

Cuba is a country with a first-to-file regime and opposition process, and most of the real owners of the trade marks have filed oppositions to defend their rights. The first Cuban citizen that filed for several trade marks was Gustavo Fuentes Ledo. He filed applications for 66 trade marks, 39 of them were subject to a formal opposition.

In the latest publication of the Cuban Trademark Office (OCPI) (30 March) one could see the several appeals filed by Fuentes Ledo (arguably the first Cuban trade mark troll). The OCPI denied his applications on grounds of unfair competition and bad faith.

Trade mark applications already decided are:

·       SM SAM’S CLUB in class 35

·       Chase & design in class 36

·       Office Depot & design in class 35

·       Capital One & design in class 36

·       Carnival & design in class 39

·       Spirit Lines & design in class 39

·       Clark & design in class 7

From the review of the decisions (we reviewed the “Informe Conclusivo” of trade mark applications: SM SAM´S CLUB and design No.2014-0488, dated 3 February 2017), the OCPI searched the internet for the trade marks and found that the trade marks existed and had been subject to extended international use. However the Cuban Trademark Office considered that the trade marks were not well-known in Cuba, at least at the moment. It considered that the opponents could not demonstrate use by Cuban undertakings or foreign investors in Cuba. It however conceded that a small portion of the population might have been exposed to those trade marks.

The OCPI relied on bad faith and unfair competition to deny registration, and considered that:

·       The applicant (Fuentes Ledo) had filed for 66 different trade marks between June 2014 and January 2015 in twenty different classes.

·       The internet search confirmed that all the trade marks filed by Fuentes Ledo were at least “very similar” to those used by third parties.

·       The opponents are well-established in their own markets, notably the US.

·       Searches in international trade mark databases returned no registrations in the name of the applicant (Fuentes Ledo).

·       The applicant, being a Cuban citizen, does not have any official (Government) permits to operate in Cuba, in any or all the different economic areas affected by the perspective trade marks.

·       Part of the goods and services covered by the trade mark applications are forbidden activities for an individual person in Cuba (“trabajo por cuenta propia”), eg manufacturing pharmaceutical or dental products and cruise lines services, “to mention some”. The products and services would be only valid in Cuba for authorized legal persons and companies.

An individual person
operating a cruise line?

According to the OCPI, those elements all together amounted to unfair competition. The OCPI considered that the applications would harm the interest of different agents in the marketplace (actual and potential entities) and consumers alike, as well as being detrimental to the public order and fair competition that must prevail with transparency, loyalty and in such a way as to allow the good development of commercial relations and the principle of legal certainty.

The OCPI also considered that the ultimate goal of the applicant was to harm third parties in an irrational way.

The OCPI did not mention, value or consider in the decisions the Panamerican Convention. However it mentioned that the decisions would comply with the international commitments assumed by Cuba with the Paris Convention and TRIPS.

It is pertinent to mention that even way back in 1997, the OCPI denied several applications or cancelled registration of well know trade marks by third parties, including: GUESS, Old Spice, Pizza Hut, Duracell, Liz Claiborne, Calvin Klein, Hewlett-Packard, Kotex, Winchester, Hard Rock Café.  

In the following months, decisions will continue to flow. No doubt that the rights of original trade mark owners will also prevail in the decisions to come."