Is It Time to Register To Protect Your Trademark Rights in Cuba?

For international companies, it may be time to start registering your intellectual property in Cuba. While the country is not yet officially open for business to American businesses, you can protect your trademark rights now.

As we previously discussed on the Scarinci Hollenbeck Business Law News Blog, President Barak Obama recently unveiled a plan to ease the Cuban embargo. Ultimately, economic and diplomatic changes to the Cuban Assets Control Regulations and the Export Administration Regulations may lead to new opportunities for U.S. businesses.

While current statistics are unavailable, U.S. companies had registered 4,000 trademarks within the Republic of Cuba as of 2002, according to the U.S.-Cuba Trade and Economic Council, Inc. Well-known brands include Starbucks Coffee, Home Depot and MasterCard.

Those who may think it’s too soon to protect their intellectual property in Cuba need only look to the legal issues U.S. corporations have experienced in China. Many international corporations, including Tesla, Pfizer and Apple, have expanded into the Chinese market only to discover that so-called trademark “squatters” had already registered their brands. As a result, they have been forced to enter protracted legal battles or pay significant sums to buy back their trademarks.

Cuba also has a “first to file” system under which trademark rights are generally bestowed on the first entity to file an application. Accordingly, there is incentive for brand counterfeiters and hijackers to pursue trademark rights ahead of U.S. companies.

For multi-national businesses, registering your trademark may be relatively easy. If you have already registered your trademark internationally under the Madrid Protocol, you simply need to add Cuba as one of the designated jurisdictions in which you want to seek protection. Companies that have not yet taken advantage of the ability to register trademarks in multiple countries under the international treaty can also pursue this avenue; however, the process will be slightly more complex.

The other option to protect your trademark in Cuba is to file a national Cuban trademark application with the Oficina Cubana de la Propiedad Industrial (OCPI). Under existing regulations enacted during the Clinton Administration, U.S. businesses are authorized to pay expenses for intellectual property protection in Cuba. Accordingly, companies can pay filing fees and retain local agents in Cuba to pursue trademark protection.