Industrial Property Mistakes can be Expensive: The Experience of "Confecciones Alba"

Name:Confecciones Alba
Country / Territory:Cuba
IP right(s):Trademarks
Date of publication:July 24, 2009
Last update:July 9, 2012

Background

The textile and clothing manufacturing company “Empresa Confecciones Pinar del Río”, located in the Pinar del Río province in western Cuba, was founded in December 1976. Its products include fashion garments, men’s clothing, unisex denim, children’s wear, workers’ uniforms and workers’ denim, along with household furnishings of all types.

In 1994, the company acquired a new trade name, “Confecciones Alba”, and set out to develop a strategy for finding new markets in Cuba and abroad for its products.

Trademarks


The registration of the "Monteros" trademark was published in the official OCPI bulletin No. 219 (July 2006)

Confecciones Alba developed industrial property and marketing strategies using a substantial portfolio of over 20 trademarks (including Bisonte, EAH, Favorita, Flux, GNU, Mina, Monteros, Naife, Pinar, Pi-Pas, Rafi and Terno) covering a wide range of distinctive textile products. At present, the company is evaluating the possibilities of registering some of its trademarks abroad, in accordance with its business and export strategy.

In 2001, the company approached the Pinar del Río Centre for Information and Technology Management (CIGET Pinar del Río) to inquire about protecting its trade name as a trademark. Although the “Confecciones Alba” trade name had been in use for more than six years, it had no legal protection because Cuban legislation requires registration under the national trademark law to obtain trademark rights in its territory.

When the company requested the Cuban Industrial Property Office (OCPI) to conduct a trademark search with a view to applying for protection of the company’s trade name, it discovered that Miroglio Tessile, a Dominican citizen, had registered the Alba trademark in Cuba under class 25 (clothing, footwear, headgear) of the International Classification of Goods and Services (Nice Classification) and other similar classes related to the activities of the Cuban company.

This situation presented a serious problem for Confecciones Alba in terms of the repercussions it could have on the future use of its trade name as a trademark. Using its name as a trademark constituted a clear violation of the Alba trademark rights acquired by Mr. Tessile, with possible economic consequences for Confecciones Alba, since it had been using this name 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, Confecciones Alba proceeded, under the advice and guidance of experts from CIGET, to bring an action before the OCPI to have the Alba trademark cancelled and removed from the trademark register on the ground of its non use during 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 “Confecciones Alba” from the trademark register. Immediately thereafter, Confecciones Alba applied to register the sign in its own name.

Business Results

The company has established its image as a successful national enterprise with very good international prospects. It has considerable success in exporting to Canada, and has cooperative production contracts with various Chinese textile companies. Between 2007 and 2010, the company's revenues have increased by about one million Cuban pesos each year.

Trademarks: Key to Successful Business Strategies

By acquiring trademark rights over its trade name, Confecciones Alba was able to preserve and enhance its well known image. The company also gained valuable experience in trademark matters for supporting its advertising, branding and marketing activities in domestic and overseas markets.