Industrial Property Mistakes can be Expensive: The Experience of Alba Confecciones (Cuba)
In 1994, a textile and clothings manufacturing company in the province of Pinar del Río, Cuba, acquired a new trade name, Alba Confecciones. With its new trade name, the company set out to develop a strategy for finding new markets (including foreign markets) for its products. It developed an industrial property strategy and a marketing strategy using a substantial portfolio of trademarks (more than 20) covering a wide range of distinctive textile products. Over the next few years, the company thus established its image as a successful national enterprise with very good international prospects. It had considerable success in exporting to Canada, and had cooperative production contracts with various Chinese textile companies.
The products made by Alba Confecciones include fashion garments, men’s clothing, unisex denim, childrenswear, workers’ uniforms and workers’ denim, along with household furnishings of all types.
In 2001, the company approached the Pinar del Río Centre for Information and Technology Management (CIGET – P. del Río) to inquire about protecting its trade name as a trademark, to discover that, although this name had been in use for more than six years, it had no legal protection because Cuban legislation requires a trademark to be registered under the national trademark law for obtaining trademark rights in its territory. The company then requested the Cuban Industrial Property Office (OCPI) to conduct a trademark search owith a view to applying for protection of the company’s trade name. It was through this that it was discovered that Miroglio Tessile, a Dominican citizen, had registered the Alba trademark in Cuba under class 25 of the International Classification of Goods and Services (Nice Convention) and other similar classes, which related to the activities of the Cuban company.
This situation presented a serious problem for the Pinar del Río company in terms of the repercussions it could have on the future use of its trade name as a trademark. Using this name as a trademark constituted a clear violation of the trademark rights acquired by Mr. Tessile, with possible economic consequences for the company, since it had been using this sign in business, including in its public relations and communications activities, for six consecutive years, without the consent of the trademark owner.
However, thanks to the inclusion in Decree No. 203 of 1999, which entered into force in May 2000, of a new legal concept for the Cuban legal system, Alba Confecciones proceeded, under the advice and guidance of experts from CIGET, to bring an action before the OCPI to have the trademark cancelled and removed from the trademark register on the ground of its non use of a consecutive period of more than three years as per the Cuban trademark law. Mr. Tessile, who owned the trademark, was unable to provide evidence of use of the trademark on Cuban territory. Therefore, the OCPI ordered the removal of the trademark “Alba Confecciones” from the Cuban trademark register. Immediately thereafter, Alba Confecciones applied to register the sign in its own name.
The company was thus able to acquire trademark rights over its distinctive mark, which went a long way in preserving and enhancing its well known image, not only in its own province but also in other nearby provinces in Cuba. The company also gained valuable experience in trademark matters for supporting its advertising, branding and marketing activities in domestic and oversees markets.
At present, the company is evaluating the possibilities of registering some of its trademarks abroad, in accordance with its business and export strategy.
Case prepared by Yoel N. Barroso Victorero and Margarita Espinosa Rodríguez.