By: Maya Day
Over the past couple years, U.S. relations with Cuba in terms of travel and trade restrictions have eased up thanks to President Obama. What hasn’t changed as much is the broad embargo against Cuba, which was first enacted in 1958, following the first Cold War. This trade embargo prevents U.S. brand owners from conducting business in Cuba with the exception of allowing U.S. companies to obtain trademark registrations in Cuba to litigate or take other steps to protect their trademarks from infringement in Cuba.
However, U.S. and Cuba have different laws in regards to trademark law. In the U.S. in order to acquire trademark rights and individual or business must actually use the mark in commerce. Simply stated, you are not granted trademark rights by merely filings an application with the U.S. Patent and Trademark Office, but rights are assigned as a result of use. Cuba, similar to China, uses the First to File strategy. Thus, a trademark is a right assigned when filed rather than earning right from use. This difference in systems and laws can be harmful to businesses outside of Cuba and non-native entities. Issues such as bad faith filing and cybersquatting is more likely to occur in an industry where native business owners can profit from the registration of trademarks that would be assigned to non-native parties.
What can be taken away from this dilemma is to be informed about the rights of each country that you intend to do business in. Assuming that U.S. trademark law is the same in other countries may land your brand in conflict with another being used in another country. Cuba has put into place some provisions to eliminate some bad faith filing and cybersquatting. Article 57 of the Decree Law No. 203 states that a trademark registration can be canceled if filed in bad faith. Furthermore, Article 17.1 states, “opposition may be filed when it is evident that a trademark application was filed to perpetrate or strengthen an act of unfair competition.” My take away: Do Your Research.