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Importance of Protecting Intellectual Property in Cuba

Posted on Apr 27, 2016 in Articles

This article originally appeared in The Legal Intelligencer on April 27, 2016.

As the relationship between the United States and Cuba continues to improve, significant business opportunities will arise. For any organization seeking to engage in the Cuban economy, the importance of having intellectual property protection is paramount.

In the past few months, several American companies have already taken significant steps toward the establishment of business ties with Cuba. Airbnb Inc. now permits Americans (and citizens of other countries) to book their stays in private Cuban homes. Starwood Hotels & Resorts Worldwide Inc. has signed deals to operate three hotels in Havana. Next month, Carnival Cruise Line cruises will begin sailing from Miami to Cuba. Google has announced plans to expand Internet service on the island. Several U.S. airlines including United Airlines Inc., JetBlue Airways, Delta Air Lines Inc. and Southwest Airlines Co. have applied for permission to offer direct flights between Cuba and the United States. Other U.S. companies as well (e.g., Verizon Communications Inc., Marriott International Inc. and General Electric) have reached business agreements with the Cuban government or are currently negotiating contracts.

While this flurry of activity will result in tremendous opportunities, it will also raise important concerns regarding intellectual property. How do U.S. companies that wish to operate in Cuba protect several of their assets, such as their trademarks and their technology?

There have been significant trade restrictions between the United States and Cuba since the Cuban trade embargo began in 1961. In 1995, however, the U.S. government amended the Cuban Assets Control Regulations so that U.S. companies could pay expenses associated with protection of intellectual property in Cuba. Thus, not only have U.S. companies been able to pay for the procurement of Cuban trademarks and patents, they have also had the ability to seek protection against infringers.

TRADEMARKS

American companies have been filing trademark applications in Cuba for the past hundred years. Trademark applications continued to be filed after Fidel Castro seized power and after President John F. Kennedy signed the Cuban trade embargo into law. Currently, more than 400 U.S. companies have registered over 5,000 trademarks in Cuba. The large number of registrations is indicative of the interest that U.S. businesses have in the Cuban market.

Obtaining a trademark registration in Cuba is a relatively straightforward matter. An applicant supplies its name, address, an image of the trademark (which is not required if the mark is a word mark), the goods/services covered, and the “nice” class(es), an international classification of goods and services applied for the registration of marks. A power of attorney is also required. Priority, the benefit of an earlier filing date in another country, may be available. The trademark registration application is filed with the Oficina Cubana de la Propiedad Industrial (OCPI). Publication occurs six months after the filing date, thus starting a two-month opposition period during which a third party may oppose the mark. Assuming there is no opposition, registration is normally completed within two years. The trademark registration is then valid for 10 years, after which it must be renewed. Renewal periods are also 10 years.

In the United States, a trademark must be used in commerce before it is eligible for federal trademark registration. Not so in Cuba. The Cuban trademark system is first-to-file, whereby registration is granted to the first party that files an application for registration. An American company seeking to conduct business in Cuba can thus be prevented from obtaining a trademark registration if another party files an earlier application to register the same mark. This is why so many U.S. companies have filed applications in Cuba during the trade embargo. Even though they were not using the mark in Cuba, these U.S. companies wanted to ensure that their trademarks were not being registered by others.

While use is not required to obtain a Cuban registration, Cuban law requires continuous use in order to keep the registration valid. Failure to use a registered trademark in Cuba for three consecutive years permits a third party to file a petition for cancellation of the registration. This could be a potential problem as the only U.S. products permitted to be sold to Cuba during the trade embargo have been agricultural goods and medicine. Fortunately, Cuba is a participant in several international treaties that address this issue. For example, Cuba is a member of the Paris Convention for the Protection of Industrial Property. Article 6bis of the Paris Convention includes a provision that requires member countries to “refuse or to cancel the registration” of a mark if it is “liable to create confusion” with a mark that is “well known in that country.” Cuba is also a member of the World Trade Organization (WTO). As such, Cuba is required to adhere to the Trade-Related Aspects of Intellectual Property Rights (TRIPS), which includes important provisions for the protection of trademark rights. Article 16 of TRIPS states that Article 6bis of the Paris Convention shall apply to all member countries. Furthermore, Cuba is a party to the Pan-American Convention, Article 7 of which provides that the owner of a mark in a contracting state has the right to oppose the use, registration, or deposit of an interfering mark. Thus, despite Cuba’s trademark use requirement, Cuba participates in numerous international treaties that should be helpful to a U.S. company trying to assert trademark rights in Cuba.

PATENTS

Patent protection in Cuba is pursued by filing a patent application with the OCPI. A patent application in Cuba includes the name, profession and address of the applicant and inventors, the title of the invention, a description of the invention, one or more claims, drawings (if required), a certified copy of a priority application (if priority is claimed), and a power of attorney. All of these documents need to be provided in Spanish. Registration is valid for 20 years from the date of filing. Patent applications can be filed directly in Cuba or as a national phase of an international application under the Patent Cooperation Treaty (PCT).

Obtain IP Protection as Soon as Possible

With relations between the U.S. and Cuba rapidly improving, business opportunities will continue to become available. While many companies are in the process of entering the Cuban market, their success will strongly depend on whether their intellectual property is protected. Some companies started to obtain the necessary protection years (or even decades) ago. For those companies new to this growing market, procurement of intellectual property protection should be initiated as soon as possible

– by Lawrence Ashery

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