Trade Marks Prosecution Factsheet: Spanish Speaking Caribbean

Paris Convention Priority can be claimed.  Cuba is a party to the Paris Convention.

• Due every 10 years with a 3-month grace period
• Restoration is not possible

• Simply signed scanned Authorisation of Agent in Spanish
• Original notarised accompanying documents in Spanish where relevant to the particular type of filing to be made, e.g. assignment or licence agreements / certificates of merger
• Priority-based applications (new filings only): a scanned copy of the certified copy priority document issued by the relevant IPO with simple Spanish translation

Cuba is party to several international trade mark agreements, including, but not limited to, the Nice Agreement, the Paris Convention, the General Inter-American Convention for Trademark and Commercial Protection, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the Madrid Agreement and Protocol, some of which proved to be powerful tools when a flurry of bad faith applications were filed in 2014 and 2015 by opportunists during a period of relaxed sanctions between the US and Cuba.  

There are two stages to the Cuban examination process: formal examination (which includes specification review) and substantive examination on absolute and relative grounds.  The opposition period commences on publication, which occurs in between the formal and substantive examinations.  Therefore, any oppositions will be considered by the examiner during substantive examination. The overall registration process typically takes 2 to 3 years.

Office actions are commonly issued where the specification is not sufficiently clear and precise, the mark is considered to lack distinctiveness, and/or there is a likelihood of confusion with earlier applications/registrations (the OCPI takes a stringent approach). 

Letters of consent and co-existence agreements may be submitted to try and overcome citations in respect of earlier identical/similar marks. However, chances of success depend on whether the examiner considers that the public may still be confused despite the agreement.  

• Due every 10 years with a 6-month grace period
• Restoration is possible at the discretion of the Registrar

• Simply signed scanned Power of Attorney in Spanish
• Original notarised accompanying documents in Spanish where relevant to the particular type of filing being made, e.g. Assignment or licence agreements / merger certificates; however, it is possible to submit a simply signed scanned declaration of change of name and/or address in Spanish to record this type of change
• Priority-based applications (new filings only): a scanned copy of the certified copy priority document issued by the relevant IPO with certified Spanish translation

The National Office of Industrial Property (ONAPI) uses TM Class and accepts goods and services in the Harmonised list of the EUIPO’s TM Class Database:  http://euipo.europa.eu/ec2.

Office actions are seldom issued based on specification queries. Office actions are normally issued where there is a likelihood of confusion with earlier trade mark applications/registrations/company names and/or the mark is considered to lack distinctiveness. Letters of consent and co-existence agreements are generally accepted at the discretion of the examiner to overcome citations.

• Due every 10 years with a 6-month grace period
• Restoration is possible at the discretion of the Registrar

• No Power of Attorney is required for most filings
• The nationality / country of incorporation and telephone number of the proprietor / their agent is always required
• Use: Filings can be made based on intent to use or actual use in Puerto Rico: 
  • If filing based on use, the date of first use in Puerto Rico and proof of use specimens showing use of the goods or services must be provided
  • If filing based on an intent to use, a Statement Establishing First Use must also be filed within three years from the date of filing of the trade mark application
  • In all cases, further proof of use evidence must be submitted between the fifth and sixth years following the filing/registration date and again on renewal
• Scanned copies of accompanying documents are required where relevant to the particular type of filing to be made, e.g.
  • Assignment or licence agreements
  • Companies Registry certificates certifying changes of name / address / mergers
• All documents may be filed in Spanish or English

It can take up to 2 years for trade mark applications to be processed in straight forward cases.

Office actions are common in respect of new filings and typically concern:

• specification queries
• requests for disclaimers in respect of any descriptive words and/or words lacking distinctiveness
• requests for a description of any design/colour elements of the mark (note that if filing in colour, a colour claim must be included with a description of the colours on the application form (Pantone codes are not required); if the applicant prefers not to file with a colour claim, the mark must be filed in black and white
• a likelihood of confusion with earlier similar applications/registrations