Protecting Trademarks in Cuba (and in other “first to file” countries)

Should you protect your trademarks in Cuba?  With the US and Cuba rapidly moving to normalize relations, companies have already contemplated entering the Cuban market and Cuban individuals have also sought to take advantage of such contemplated pent up demand by filing well known US brands in Cuba before US companies realize they probably should.  Can such individuals do that?  They sure can, not only in Cuba, but in any number of “first to file” countries where there are no use requirements to obtain trademark protection.  Although such registrations by third parties can eventually be challenged when there is no legitimate use, the process can be long, tedious and expensive.  So here are some reasons to move forward with registration in Cuba (or other countries):

1.  If you are expecting a significant market in Cuba or other first-to-file countries, then you should seriously consider filing in those countries.  The Obama administration is opening up the doors wider in Cuba and presumably Hillary will continue such path.  Of course, you should also consider other factors such as the cost of enforcing, your sales in such country, and the country’s record of fairly enforcing such rights.  Also consider what it might take to get back your mark from a “pirate” in Cuba or elsewhere.  If your mark is famous in the US, typically you have some recourse if the mark is also considered famous in the country of concern.  That could pose a potential challenge to prove in Cuba and therefore it would seem to be easier to pre-emotively get your own registration in Cuba before a pirate does.
2. You can register in “first-to-file” countries without actually having commercial use in such countries.  A number of countries do have mechanisms for canceling such marks if they are not commercially used within a certain period of time after registration.  Some countries also have compulsory licensing requirements (requiring licensing to third parties) if the marks are not otherwise used by the Registrant.
3. The cost can be reasonable to obtain registration in Cuba.  You can file a national application or file via the Madrid System.  If you are attempting to broadly protect your mark or marks throughout most of the world, the Madrid system would be the most cost effective and convenient method to obtain protection in Cuba and other countries.  This assumes that no one has already filed the same or similar mark and no major substantive issues are involved.

Here are some “war stories” that we have become aware about:

“Cafeteria La McDonald’s Camagueyana”  v. McDonald’s:  Julio Manzini named his small restaurant “Cafeteria La McDonald’s Camagueyana” and used golden arches as part of his signage in the Cuban city of Camaguey.  He apparently removed the “McDonald’s” and arches after supposedly being visited by a representative of the famous US entity in order to avoid any legal issues and costs to defend that could put his business in ruin.  Despite McDonald’s already owning a Cuban trademark registration, the example above illustrates the lack of respect or indifference the public and/or government may have towards such intellectual property rights.  Some education and more publicized incidents as the normalization rolls out will eventually get the message across as the Cuban Government and their people will eventually want their rights protected in the US accordingly.

Some famous US marks already registered in Cuba:  Nike, Pepsi, Starbuck’s Coffee, Intel, Burger King, Walmart, Google, Twitter, Uber

Bacardi currently controls the Havana Club mark in the United States, but the Cuban Government and French JV partner Pernod Ricard control the mark elsewhere.  Havana Club is a brand created in Cuba in 1934 originally produced by the Jose Arechabala SA company.  The brand was nationalized after the Cuban Revolution of 1959 and the brand promoted by the Cuban government was eventually assigned to Pernod Ricard.  Arechabala sold their rights to Bacardi.  Several rounds of litigation ensued.  Lately, the U.S. trademark office registered a mark for Havana Club to the Cuban government sparking more controversy.  Litigation is still ongoing….

Since January 1997, Empress Cubana Del Tabaco d.b.a Cubatabaco has been challenging the US rights for COHIBA currently owned by General Cigar Co., Inc.

The longtime US embargo has created a unique legal situation that may continue to embroil the parties involved in an “arroz con mango” (major mess) for many more years to come.

Let us know what you think….