RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/321/Add.2
23 November 2001
(01-5999)
Council for Trade-Related  Aspects
of Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION
Replies by Cuba to Questions Posed by the European Communities and
its Member States and by Japan
Addendum
By means of a communication from the Permanent Mission of Cuba, dated
23 November 2001, the Secretariat has received the fo llowing replies to the questions posed by the
European Communities and their member States and by Japan, which were circulated in documents
IP/C/W/320 and 322 respectively.
_______________
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. G ENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health
and nutrition, and to promote the public interest in sectors of vital importance to your socio-
economic and technological development as mentioned under Article 8 of the TRIPSAgreement.  If yes, please explain how such measures are consistent with the provisions of the
TRIPs Agreement.
With regard to the question of the principles of the TRIPS Agreement and their treatment in
our legislation, responses will be provided on the occasion of the review of the legislation relating toinventions and industrial designs, since at this point, only the legislation on trademarks and other
distinctive signs will be under review.
We are in a similar situation with respect to the questions referring to copyright and related
rights, geographical indications, industrial designs, patents and layout-designs (topographies) ofintegrated circuits.
As regards the protection of undisclosed information, it is to be included in the draft
Decree-Law on Protection against Unfair Competiti on, which will not be under review at this stage.
B. C
OPYRIGHT AND RELATED RIGHTS
2-9. [No replies received]IP/C/W/321/Add.2
Page 2
C. T RADEMARKS
10. Please give the definition of a sign under your national legislation and explain under
what conditions it is protectable.
Distinctive sign:  "Any sign which constitutes a trademark, a trade name, a company emblem,
the title of an establishment or a commercial logo."
Trademark:  "Any sign or combination of signs that serves to distinguish products or services
from similar products and services in the market."
Article 3.1 of Decree-Law No. 203 stipulates that the following may constitute trademarks:
(a) Denominative signs such as letters, wo rds, figures and any combinations thereof;
(b) figurative signs such as images, figures, drawings, symbols and graphics as well as
the colour, provided it is defined by a given form, and combinations of colours;
(c) mixed signs made up of a combination of denominative and figurative signs;
(d) three-dimensional shapes, provided they can  be delimited from the product, including
wrappers, packaging, the shape of the product or the way it is presented;
(e) smells;
(f) sounds and combinations of sounds.The names of specific persons may constitute denominative signs, subject to authorization in
the form of a public document, and provided it does not involve deception or confusion of the public.
In principle, distinctive signs are protectable as long as they are not covered by any of the
absolute or relative prohibitions established in Articles 16.1 and 17.1 of Decree-Law 203.  In a
general sense, they must have the capacity to distinguish per se  and in respect of the rights of third
parties.
11. Please confirm whether or not services are a protectable subject-matter in your
trademark law.  Please confirm if signs, such as trade names, are protectable.  Please describe if
elements such as sound, perfumes and containers are protectable.
Services can be distinguished by protectable distinctive signs under Articles 2 and 45 of
Decree-Law 203.
Trade names and three-dimensional shapes are also protectable provided they can be
distinguished from the product:  these include wrappings, packaging, the shape of the product and the
way it is presented as well as sound and olfactory marks (Article 3(d), (e) and (f) of Decree-law 203).
However, as established in Article 2(a) with respect to Article 3.1(e) and (f), the registration
of sound and olfactory marks is subject to a ruling by the Minister of Science and Technology and the
Environment until such time as the necessary conditions for their registration have been established in
accordance with the Second Final Provision of the said Decree-Law.IP/C/W/321/Add.2
Page 3
12. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a
registration in that respect.
There are no requirements of use as a condition for a trademark registration.  However, in
order to maintain the registration of a mark and ensure that it is not revoked, ex officio or by petition,
real and effective use is a requirement under Article 64, which stipulates that:
"Trademarks shall be revoked when:(a) The period of validity expires without their having been renewed;  and
(b) the owner has not made real or effective use of the trademark in the national territory
during three consecutive years following the date on which it was granted and during
its validity, or when such use has been interrupted for the same amount of time prior
to the action for revocation."
Article 65.1, for its part, states that "when the use of a mark begins after the period mentioned
in indent (b) of the previous article has elapsed, such use shall only prevent the registration from
being revoked if it has begun at least three months prior to the date on which the petition for
revocation was filed."
Similarly, Article 53.1 of Decree-Law 203 states that:
"The trademark shall be considered to be in use when the products or services that it
distinguishes have been offered for sale, through channels of distribution or commerce, or are
available to the end user within the national territory under that trademark, continuously, inthe usual quantity and form, bearing in mind the size of the market, the nature of the products
or services concerned and the conditions under which they are marketed.
The definition of the use of a trademark shall also include:(a) Utilization in respect of products intended for export from the national territory or in
respect of services offered abroad from the national territory;  and
(b) utilization in advertising, even when such utilization precedes the introduction into
the market of the products or services in question, provided such introduction actually takes
place no later than two months following the launching of the advertising campaign."
Article 54 of the said Decree-Law states that:
"A trademark shall be considered to be in use when it corresponds to the trademark registered
in the Office.  However, the use of the trademark in a form different from that in which it was
registered only with respect to details or features that are not essential and do not alter itsidentity shall not constitute grounds for revocation of registration for non-use, nor shall it
lessen the protection afforded".
Use by the licensee shall be treated in the same way as use by the owner (Article 65.3).
When the non-use of a trademark is lawfully justified in the eyes of the Office, revocation
shall not be declared ex officio or by petition once the opinion of the owner has been heard
(Article 66).IP/C/W/321/Add.2
Page 4
13. Please confirm whether or not your legislation permits that the registration of
trademarks be indefinitely renewable.
Under our legislation, the initial duration is ten years from the date of the submission of the
application.  It is indefinitely renewable by successive periods of ten years at the request of the ownerand subject to payment of the established fee (see Article 48 and 49.1 of Decree-Law 203).
The procedure for the renewal of a registration is regulated by Articles 81-84 of the
Regulations to the said Decree-Law, made operational by Resolution No. 63 of the Ministry of
Science, Technology and the Environment.
14. Please describe the special requirements, if any, prescribed by your legislation
concerning the use of a trademark.
Title III (Administrative Procedure before the Office), Chapter II (Processing), Section Five
(Procedure for the Declaration of Nullity, Cancellation and Revocation of Registrations) of the
Regulations to Decree-Law 203 on trademarks lays down the rules governing this process before theOffice.
Under Article 54 of the said Decree-Law, a trademark is considered to be in use when it
corresponds to the trademark registered in the Office.  However, the article goes on to state that the
use of a trademark in a form different from that in which it was registered only with respect to detailsor features that are not essential and do not alter its identity shall not constitute grounds for revocation
of registration for non-use, nor shall it lessen the protection afforded.
Finally, Article 63.2 of the said Decree-Law, stipulates that:
"In a revocation procedure for non-use, it is up to the owner to prove the use of the
trademark."
D. G
EOGRAPHICAL INDICATIONS , E. INDUSTRIAL DESIGNS , F. PATENTS , G. LAYOUT -DESIGNS
(TOPOGRAPHIES ) OF INTEGRATED CIRCUITS , H.  PROTECTION OF UNDISCLOSED INFORMATION
15-45. [No replies received ]
I. ENFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
Title X (Actions and Measures for Infringement of Rights), Chapter I (Judicial Proceedings),
Article 126.1, states that:
"In the course of infringement proceedings, one or more of the following measures may be
ordered by the court at the request of the claimant:
(a) Cessation of the infringing acts;
(b) compensation for material injury;
(c) damages;IP/C/W/321/Add.2
Page 5
(d) seizure of the goods relating to the infringement, including containers, packaging,
labels, printed or advertising materials and other materials resulting from the
infringement as well as the materials and means that served principally to commit the
infringement;
(e) prohibition of the import or export of the goods, materials or means referred to in
indent (d);
(f) transfer of ownership of the products, materials or means referred to in indent (d), in
which case value of the goods shall be charged against the amount of the damages;
(g) measures necessary to prevent the continuation or repetition of the infringement,
including the destruction of the goods, materials or means referred to in indent (d);
(h) moral damages;
(i) publication of the judgment and notification thereof to the interested parties at the
expense of the defendant."
Provisional measures may also be ordered, and implemented by the competent authorities.
These measures are set forth in Article 131 of Decree-Law 203, and consist of:
(a) Immediate cessation of the acts constituting the infringement;(b) seizure or detention of the goods, packaging labels and other materials displaying the
infringing sign and the means that served  principally to commit the infringement;
(c) suspension of imports or exports of the goods, materials or means referred to in
indent (b).
Persons with standing, in this case the holder of the right conferred under Decree-Law 203, as
well as the licensee, subject to the conditions agreed in the licence, may file a claim, under
Article 125.1, with the competent People's Provincial Court against anyone who infringes that right,in accordance with the rules on jurisdiction and th e provisions governing ordinary proceedings laid
down in the Law on Civil, Administrative and La bour Procedure (Law No. 7 of 19 August 1977).
Actions may also be brought against a person who performs acts that clearly point to the preparation
of an infringement.
"125.2  In the event of joint ownership of a ri ght, any of the joint owners may initiate the
actions without the consent of the others being necessary, unless otherwise agreed."
The Decree-Law itself, in Article 87, states that the owner of an exclusive licence may also
initiate actions in defence of a trademark in the event that the owner of the trademark has failed, upon
request, to bring such action himself within the time-limit laid down within Article 128.
Action may also be initiated by an association, federation, trade union or other entity
representing the interested parties, provided it is so authorized.
The public prosecutor may institute proceedings where the interests of society or the State are
affected.
Actions for an infringement of a right conferred by the above-mentioned Decree-Law 203 is
barred after five years following the last infringement, pursuant to Article 128.IP/C/W/321/Add.2
Page 6
47. Please explain whether or not your legisl ation provides for a mechanism to appeal to
judicial bodies of final administrative decisions.
Article 124 in Title IX (Actions against Deci sions of the Office) of Decree-Law 203 states
that:
"Administrative proceedings may be brought against the decisions of the Director-General of
the Office before the Civil and Administrative Division of the People's Provincial Court of the
City of Havana within a period of 30 days from the day following notification."
This applies to decisions issued in connection with the settlement of appeals filed against the
final examination report issued by the Head of the Department of Trademarks and Other Distinctive
Signs totally or partially refusing a registration, and in proceedings for nullity, cancellation or
revocation of registrations heard at first instance by the administrative authority in the Cuban
Industrial Property Office and that are not open to judicial appeal.
Administrative procedures are regulated by Book Two (Administrative Procedure), Titles I-V
of the Law on Civil, Administrative and Labour Procedure.
48. Please describe how your legislation authorizes judges to order production of evidence
by the opposing party.  Please give precise information on what measures are taken to ensurethe protection of confidential information.
Article 42 of the Law on Civil, Administrative and Labour Procedure (LPCAL) authorizes the
court to summon the parties to appear at any stage of the proceedings for interrogation on the facts of
the case or to order the inspection of the objects in dispute and the books or documents relating to the
case, provided this is indispensable to the examination of the facts.  Article 126, indent 4 ofDecree-Law 203 authorizes the cour ts to order the defendant, at any time during the proceedings, to
supply information concerning persons that participated in the production or marketing.  Subject to
the above, it is important to point out that in spit e of this, Article 244 of the LPCAL leaves it up to the
parties to prove, by such means as the Law authorizes, the facts asserted by them and those adduced
in refutation of the claims of the opposing party.
As regards the protection of confidential information, its inclusion is planned in the draft
Decree-Law on Protection Against Unfair Competition, which will not be reviewed at this stage, and
where the legitimate interests of defendants in respect of the protection of their industrial and
commercial secrets will be taken into account.
49. Please quote provisions of your legislation that authorize judges to order a defendant to
desist from an infringement.
Article 126.1(a) of Decree-Law 203 authorizes the court to order the cessation of acts that
constitute an infringement at the request of the complainant.
50. Please quote what provision of your legislation authorize judges to order the payment to
the right holder of adequate damages to compensate the injury he suffered.
Article 126(b) of Decree-Law 203 authorizes judges to order, at the request of the
complainant, the payment of damages for material injury.  This basically complements Articles 82 to
88 of the Civil Code, Law 59 of 16 July 1987, which regulates matters relating to responsibility for
unlawful acts and essentially stipulates that:IP/C/W/321/Add.2
Page 7
- A person that unlawfully causes injury or prejudice to another shall be liable for
damages (Article 82 of the Civil Code).
- Civil liability damages shall include, inter alia , compensation for material injury
(Article 83(b) of the Civil Code).
- Compensation for  material injury includes payment of the value of the good
(Article 85 of the Civil Code).
- Article 87 of the said Code lays down the rules governing compensation for material 
damage.
Article 127 of Decree-Law 203 establishes the way in which damages are calculated in
accordance with the following criteria:
(a) Loss of profits suffered by the right holder as a result of the infringement;
(b) the amount of the profits earned by the infringer as a result of the infringing acts;
(c) the price that the infringer would have paid under a contractual licence, taking into
account the market value of the infringed right and contractual licences that have
already been granted.
51. Please quote what provisions of your legislation authorize judges to order the payment
of the right holder's expenses by the infringer.
Articles 198 to 212 of the LPCAL regulate the procedure for the payment of legal expenses.
Article 201 of the LPCAL states that in handing down their final judgement in a case, the courts shall
make a special ruling with respect to legal expenses.
52. Please explain if and how judges have the authority to order that infringing goods are
placed outside channels of commerce or destroyed.
Article 126.1, indents (d), (e) and (g) of Decree-Law 203 on Trademarks and Other
Distinctive Signs gives the courts the authority to take such measures as may be necessary to place the
infringing goods outside channels of commerce or to destroy them, such as:
(d) Seizure of the goods relating to the infringement, including containers, packaging,
labels, printed or advertising material and other materials resulting from theinfringement as well as the materials and means that served principally to commit the
infringement;
(e) prohibition of the import or export of the goods, materials or means referred to in
indent (d);
(g) measures necessary to prevent the continuation or repetition of the infringement,
including destruction of the goods, materials or means referred to in indent (d).
53. Please quote what provisions of your legislation authorize judges to indemnify a
defendant in the event of abuse by the plaintiff.
In civil cases, this would correspond to the claim for damages under the already mentioned
Articles 82 to 88 of the Civil Code.IP/C/W/321/Add.2
Page 8
54. Please explain how your legislation implements Article 50 of the TRIPS Agreement.
Under Article 130.1 of Decree-Law 203 on Trademar ks and Distinctive Signs, "[t]he claimant
may apply to the court handling the case for the introduction of immediate provisional measures witha view to preventing the continuation of the infringement, avoiding its consequences, obtaining or
preserving evidence or ensuring the effectiveness of the action.
Such provisional measures may be requested before the initiation of proceedings, in
conjunction therewith, or after their initiation.  If the provisional measure is requested before the
initiation of proceedings, the court, upon ordering the measure, shall require the requesting party to
provide a sufficient security to meet the outcome of the proceedings."
Article 131 of Decree-Law 203 states that the court may order the following provisional
measures:
(a) Immediate cessation of the acts constituting the infringement;(b) seizure or detention of the goods, packaging, labels or other materials displaying the
infringing sign and the means that serv e principally to commit the infringement;
(c) suspension of imports or exports of the goods, materials or means referred to in
indent (b).
55. Please identify the competent authorities in your jurisdiction who receive requests from
right holders for an application to suspend the release of counterfeit goods by the customs
authorities.
Title X, Chapter III (Special Border Measures) of Decree-Law 203 stipulates that the holder
of a right protected thereunder who has reasonable grounds for supposing that goods infringing that
right are about to be imported or exported may request the competent People's Provincial Court to
order the customs authorities to detain the imported or exported goods at the time of their clearance.
The conditions and guarantees applicable to provisional measures apply to requests of this kind and to
the orders given.
When ordering a border measure, the court must require the person requesting such measure
to provide sufficient security to meet the outcome of the proceedings.
When the applicable conditions and guarantees have been fulfilled, the court shall order or
refuse the detention and notify the claimant accordingly.
Anyone requesting detention shall, subject to appropriate identification, provide the court
with the necessary information and a description of the goods that is sufficiently detailed and accurate
for them to be easily identified and recognized by  Customs.  Upon ordering the detention, the court
shall require the requesting party to provide a se curity to meet the outcome of the proceedings.
Once the detention has been effected, Customs shall immediately provide notification thereof
to the importer or exporter of the goods, the party requesting the measure and the corresponding court.
If Customs, after ten working days have elapsed from the date of notification of the detention
to the requesting party, has not been informed that judicial proceedings on the merits have been
instituted or that the court has ordered provisional measures to prolong the detention, the detentionIP/C/W/321/Add.2
Page 9
shall be lifted and the detained goods shall be released.  In duly justified cases, that time-limit may be
extended by ten working days.
Where the detention was ordered as a provisional measure, the time-limit provided for such
measures shall apply.
Once the judicial proceedings on the merits have been initiated, the party affected by the
detention may appeal to the court for a review of the detention ordered, and a reply shall be issued for
that purpose.  The measure in question may be modified, revoked or confirmed.
A regulation to the same effect is provided for in Chapter III of Resolution No. 25 of
24 September 2001 of the Director of the Customs General of the Republic (Regulations on theDetention of Goods for Infringement of Intellectual Property Rights) in connection with other
intellectual property procedures.
56. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
The process described in the previous question also applies to the exporting of goods.
Article 136.5 of Decree-Law 203 stipulates that "[o]nce the detention has been effected, Customs
shall immediately provide notification thereof to the importer or exporter of the goods, the party
requesting the measure and the corresponding court."
Moreover, Article 137 stipulates that "[i]f Customs, after ten working days have elapsed from
the date of notification of the detention to the requesting party, has not been informed of judicial
proceedings on the merits have been instituted or that the court has ordered provisional measures to
prolong the detention, the detention shall be lifted and the detained goods shall be released.  In dulyjustified cases, that time-limit may be extended by ten working days.
Where the detention was ordered as a provisional measure, the time-limit provided for such
measures shall apply.
Once the judicial proceedings on the merits have been initiated, the party affected by the
detention may appeal to the court for a review of the detention ordered, and a reply shall be issued forthat purpose.  The measure in question may be modified, revoked or confirmed.
A regulation to the same effect is provided for in Chapter III of Resolution No. 25 of
24 September 2001 of the Director of the Customs General of the Republic (Regulations on the
Detention of Goods for Infringement of Intellectual Property Rights) in connection with otherintellectual property procedures."
57. Please indicate whether or not your legislation provides for a de minimis  imports
exception.
Article 141 of Decree-Law No. 203 on Trademar ks and Other Distinctive Signs provides
specifically in relation to these procedures that small quantities of goods of a non-commercial nature
carried by passengers or sent in small consignments shall be excluded from the special provisions
relating to border measures.
Article 24 of Resolution No. 25 of 24 September 2001 of the Director of the Customs General
of the Republic (Regulations on the Detention of Goods for Infringement of Intellectual Property
Rights) provides that "[t]he provisions of this Regulation shall not be applied where the goods
allegedly infringing intellectual property rights:IP/C/W/321/Add.2
Page 10
(a) Are goods in international transit;
(b) are consignments of a non-commercial nature;
(c) form part of the personal effects of travellers."
58. Please explain how your legislation implements Article 61 of the TRIPS Agreement.
Title V (Offences Against the National Eco nomy), Chapter VIII (Deception or Prejudice to
Consumers), Article 227.2 of the Criminal Code currently in force (Law 62 of 27 December 1987
amended by Decree-Law 140 of 13 August 1993, D ecree-Law 150 of 6 June 1994, Decree-Law 175
of 17 June 1997 and Law 87 of 26 February 1999, stipulates that "the same penalty (custodial
sentence of one to three years or a fine of 300 to 1,000 " cuoats " (units of account) shall be imposed on
anyone who offers for sale, arranges to export or exports an industrial or agricultural product
displaying an indication of quality or a trademark which does not correspond to the product in
question."
Title V (Offences Against the National Economy), Chapter XII (Contraband), Article 234
stipulates, that:
"Anyone that is regularly engaged in the purchase, concealment or exchange of objects or
goods which by their nature or owing to the circum stances of the transaction make it clear or make it
reasonable to assume that they were introduced into  the country in violation of the law, or that is
involved in any way in the disposal or sale of such objects or goods, shall be liable to a custodial
sentence ranging from six months to two years or a fine of 200 to 500 ' cuoats'  or both."
At the same time, Title VII (Offences against Public Confidence), Section Ten (Manufacture,
Introduction or Possession of Implements Intended for Counterfeiting) of Law 62 stipulates in
Article 259.1 that:  "Anyone who manufacturers or intr oduces into the country stamps, presses, marks
or other implements or tools intended for counterfeiting as defined in the preceding sections shall be
liable for a custodial sentence of two to five years."
Similarly, Chapter III (Transmission, Illegal Possession of Cultural Assets and Counterfeiting
of Works of Art), Article 246, of Law No. 87 of  26 February 1999 amending the Criminal Code,
provides as follows:
"A custodial sentence of one to three years or a fine of 300 to 1,000 ' cuoats'  or both shall be
imposed on anyone who, to the detriment of its crea tor or of the cultural heritage, counterfeits or
traffics a work of art", and goes on to state that "if serious injury is caused as a result of the offences
provided for in the preceding indent, the penalty sha ll be a custodial sentence of two to five years."
However, it should be emphasized that a draf t Decree-Law on Industrial Property Offences is
currently under consideration, as is a draft Decree-Law on Copyright, and that both of these includeprovisions complimentary to Cuba's obligations in this field.
JAPAN
J. 
COPYRIGHT AND RELATED RIGHTS
1. Please explain exceptions or exemptions of  the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbouring Rights Law, if any, as permitted in
Articles 3 and 4 of the TRIPS Agreement.IP/C/W/321/Add.2
Page 11
Although copyright legislation is not the subject of review at this stage, the relevant draft
Decree-Law that is awaiting approval provides for the obligations laid down in Articles 3 and 4 of the
TRIPS Agreement.
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