Trademark Protection - Strategies for Cuba

Trademark Protection: Strategies for Cuba
posted on: Wednesday, April 1, 2015

Following President Obama's December 2014 announcement of a relaxed
policy towards Cuba, many companies await the opening up of the Cuban
market. Some steps can be taken now to protect a company's valuable
trademarks and other IP in Cuba.

An exception to the long-standing US embargo on trade with Cuba permits
US companies to file for and obtain trademark registrations in Cuba. US
companies should consider taking immediate action to protect their
trademark rights in that country. Doing so is advisable because Cuba is
a "first to file" jurisdiction – in other words, a Cuban registration
for a trademark will be awarded to the first applicant, even if that
applicant has no legitimate claim to the mark.

An applicant does not have to use the mark in Cuba, or even plan to
expand its business into that country, before filing an application for
trademark registration. Proactively seeking a Cuban trademark
registration now will help ensure that the mark is available when trade
with Cuba is allowed. Applying for trademark registrations now also will
help avoid later conflicts with counterfeiters or serial infringers who
may try to beat legitimate trademark owners to the registration punch.

How to Apply for a Trademark Registration in Cuba
There are two ways to apply for a Cuban trademark registration: (1) if a
US company owns a current US trademark registration, a Cuban application
can be based on the US registration and filed through the international
Madrid Protocol treaty; or (2) a national Cuban trademark application
can be filed through local trademark agents with the Oficina Cubana de
la Propiedad Industrial (OCPI), the Cuban equivalent of the US Patent
and Trademark Office.

A Cuban application is screened against existing registrations granted
by the Cuban OCPI. As in the US, applications that conflict with
existing registrations will be rejected.

The IP exception to the embargo allows US businesses to pay filing fees
and retain local agents in Cuba in order to protect their intellectual
property rights. In addition to obtaining trademark registrations in
Cuba, US companies can seek patents in Cuba. US companies also are
permitted to litigate or take other steps to protect their copyrights,
trademarks and patents from infringement in Cuba. Lawyers in our
Intellectual Property & Technology Practice Group can assist clients
with all of these activities.

Source: Trademark Protection: Strategies for Cuba | The National Law
Review -
http://www.natlawreview.com/article/trademark-protection-strategies-cuba