President Obama’s announcement to normalize U.S. relations with Cuba has created a flood of momentum for U.S. companies hoping to open new business markets there; however, business owners should spend the time now to learn the legal and regulatory framework they will encounter in Cuba, and the steps they can take immediately to be ready when opportunities arise.
Trademark protection is one step that is currently permitted under the federal Cuban Assets Control Regulations (“CACR”), and is extremely important because Cuba is a “first to file jurisdiction.” Meaning that in Cuba, the first person to apply for and register a trademark owns it, even if he is not using the mark in Cuba or elsewhere. As you might expect, famous U.S. brands are already being registered, and NOT by their U.S. owners. The CACR permits brand owners to (i) file, prosecute and register trademark applications and to renew registrations in Cuba; (ii) file opposition, cancellation or infringement proceedings in Cuba; and (iii) make required payments to the Cuban government and/or attorneys relating to the foregoing. There are two ways to apply for trademark protection in Cuba: filing a Cuban national trademark application with the Oficina Cubana de la Propiedad Industrial (OCPI), or by filing an international application through the Madrid Protocol (current international registration holders may apply by designating Cuba as an additional country).
U.S. companies should move quickly to register their trademarks in Cuba or face increased costs by having to redeem it from a trademark squatter or by instituting proceedings to cancel or oppose rights wrongfully obtained.