Caribbean IP Providing Services in Cuba

On December 17, 2014, U.S. President Barack Obama announced plans to ease the country’s 54 year-long Cuban embargo. In the wake of this announcement, the Department of the Treasury issued new Regulations in January 2015 to start easing restrictions on trade and travel. However, current Treasury regulations already allow for the protection of Cuban marks in the U.S. and American marks in Cuba. Nationals of either country are authorized to spend money to register, prosecute or oppose a trademark, patent, or copyright. 

Cuba is a first to file trademark system, and although there is some very limited protection for well-known marks (even if unregistered), the best thing a trademark owner can do is to register to secure rights in a mark. Mark owners should be aware that there is a three year non-use period that runs from the time of registration. This means that mark owners must begin using their registered marks locally within three years or risk the mark becoming vulnerable to an action for cancellation. In the past, this vulnerability may have deterred many U.S. mark owners who worried they would not be able to use their registered marks locally in Cuba. However, there is hope that with the ongoing changes and easing of restrictions on trade with Cuba, it will become easier for U.S. brand owners to make sure of their marks locally.

Because Cuba is a first to file system, hesitation on the part of mark owners to register their marks can leave the door open to third party registrations for the same or similar marks. There have been various reports of squatters who have begun registering arguably famous brand names in Cuba, which has obvious repercussions for the rightful owners of those marks. In fact, one individual already has filed applications in his own name for such marks as Nascar, Nordstrom, Sam’s Club, Chase, Quiznos, and Chipotle among others.

Caribbean IP is helping clients and brand owners to protect their marks in Cuba. Please contact us at Katherine@Caribbean-IP.com for additional assistance!