Recent relaxations in travel restrictions and talks to end the economic embargo the United States has imposed on Cuba for more than 50 years have increased interest in the Cuban market. With its close proximity and 11 million consumers longing for U.S. products, Cuba offers enticing new possibilities. With that new market comes the need for trademark protection to prevent unauthorized third parties trading off of the goodwill of U.S. companies. Because Cuba is a “first to file” country, seeking trademark protection through registration in Cuba should be done sooner rather than later.
A “first to file” system allows the first party to file for trademark registration to obtain exclusive rights in the underlying trademark, which is different from the use-based system in the U.S where a party obtains rights through actual use, regardless of who registers first. Cuba’s type of trademark system allows for “squatters” to register numerous brand names without having to ever use them. Not only can squatters produce products and sell them under a U.S. brand name in Cuba, any registrations held by those squatters can pose obstacles to “real” trademark holders. The first avenue for preventing such problems is for U.S. companies to be proactive in seeking trademark protection.
Trademark registration in Cuba is relatively easy and reasonably priced in comparison to the challenges of trying to retrieve a trademark from an unauthorized third party. There are two ways a U.S. company can register in Cuba: (1) since the U.S. is a member of the Madrid Protocol, if the company has an international registration or application, they can designate Cuba for extended protection; or (2) companies can file through local Cuban counsel with the OCPI, Cuba’s Intellectual Property Office. U.S. companies have some breathing room with regards to actual use. Cancellation proceedings for nonuse cannot be petitioned for three years after the filing date, giving companies a three-year window to evaluate whether they want to enter the Cuban market and/or see how the U.S.-Cuba embargo talks evolve. Both filing options offer time to strategically decide whether or not to enter the Cuban market at a relatively low cost.
So what can a U.S. company do if a squatter has registered its brand name first? Cuba is a party to international agreements that offer some protection to unregistered, but well-known marks, though the embargo may make it difficult to prove that a mark is “well known” in the Cuban market. However, a squatter’s application or registration can be opposed or cancelled if the squatter merely had knowledge of the company’s brand name in the U.S. before filing. Finally, the squatter’s trademark application could be opposed based on it infringing another’s copyright, so brand owners may be able to seek copyright protection of some brands that contain copyrightable subject matter, like graphics, in order to combat an unauthorized trademark registration.
As the U.S. and Cuba continue to normalize their relations, U.S. companies should consider the relative ease and reasonable price of registration in Cuba to prevent the headache of reclaiming their brands from squatters. Keep in mind that the Cuban registration process is lengthier than the U.S. and that the increasing attention the U.S.-Cuba talks are getting may create an influx in applications that will slow the process further. U.S. companies should seriously discuss and consider protecting their trademarks in Cuba now.