President Obama’s historic visit to Cuba is yet another step on the “new course” for US/Cuba relations. Since late 2014 the US and Cuba have been working toward normalizing relations. In January 2015, a number of changes to US sanction and trade policies toward Cuba were implemented which are beginning to open up new business opportunities for US companies in Cuba. While change may be incremental and slow, companies that prepare now for business in Cuba will be ready. One area that US companies should begin to consider regarding conducting business in Cuba is protection of their intellectual property in that country.
Cuban Trademark System
Cuban trademark rights are based on filing and registration rights. The first entity to file a trademark application in Cuba will generally be the entity that has the most superior rights to that trademark over any subsequent filer. The registration process itself is fairly simple. An application is filed, filing fees are paid and the application is reviewed by the Oficina Cubana de la Propiedad Industrial and then published for opposition. If no opposition to registration is filed, a registration will issue upon payment of registration fees. A trademark registration will last for ten years in Cuba before it must be renewed. A trademark registration may be vulnerable to cancellation however if there is no use of that mark for a three year period.
Because Cuba is based on “first to file” rights and does not require any showing of use of a mark to obtain registration, an unrelated, unauthorized third party can potentially register a trademark and essentially block the rightful owner from registering or using that mark in Cuba. This is not unlike the situation many US companies have found themselves stuck in within China. Early registration in Cuba could thus prevent registration of your mark by a third-party or competitor. Accordingly, even if conducting business in Cuba may still be a few years away, acquiring trademark rights now serves a significant defensive purpose.
While the Cuban system is based on first to file rights, before a registration is issued the mark is published and there is an opportunity to challenge registration of that mark. By monitoring publication, a company can learn whether another entity has sought registration of its marks or anything similar and then take steps to prevent registration of those marks. While monitoring new trademark application filings and challenging such registrations in the United States is a fairly common practice, because Cuba is a first to file jurisdiction it makes sense for companies with potential Cuban interests to monitor that market as well.
Avoid an Overtaxed Bureaucracy
Another reason companies should consider Cuban trademark registration now is that while it may take time to reach normalized relations, the closer to that time, the greater the number of businesses that will be entering and interested in the Cuban market. Therefore, the Cuban IP protection system and institutions like the Oficina Cubana de la Propiedad Industrial may likely become overburdened and the time to obtain a registration in Cuba may grow to years. Therefore, early filers can likely take advantage of a shorter period of time to obtain registrations.
Even though normalized relations may still be years away, our attorneys can help you now to start planning for business in Cuba. Call us to discuss how this changing dynamic could impact your business and to devise a strategy to prepare you for the future.
Photo credit: “Flag of Cuba” Drawn by User:Madden
Licensed under Public Domain via Wikimedia Commons