Member Article

As the US diplomatic relationship with Cuba continues on itspath of normalization and the possibility for increased economic opportunitiesfor US companies with the island increase with the potential further looseningof restrictions prohibiting engaging in business in Cuba, US businesses lookingat the Cuban market have begun taking steps to register their trademarks inCuba. If this is a possibility for your business, then you should considerprotecting your trademarks in Cuba because Cuba is a “first to file”jurisdiction, which means a Cuban trademark registration will be awarded to thefirst applicant, even if that applicant has not previously used the mark.Presently, US businesses may register their trademarks in Cuba in one of twoways. First, a national trademark application may be filed with the OficinaCubana de la Propiedad Industrial (OCPI) — the Cuban counterpart tothe US Patent and Trademark Office (USPTO). Alternatively, a US business that currently owns aUS-registered trademark may file an international application based on the USregistration through the Madrid Protocol Treaty.

Filing a NationalTrademark Application in Cuba

The US Department of the Treasury’s Office of Foreign AssetsControl’s (OFAC) Cuban Assets Control Regulations (CACR) permit the filing,prosecution and renewal of any application for a patent, trademark or copyrightissued by the Cuban government, as well as related filings or prosecutions ofopposition or infringement proceedings. 31 C.F.R. 515.528. As a result of thisgeneral authorization, US businesses may avail themselves of the local processfor filing trademark applications in Cuba.

To file a national trademark registration application inCuba, you must use the assistance of an official local agent (Agente Oficial dela Propiedad Industrial). Prior to filing the trademark application, performinga search for the mark or any similar marks that may be registered, to ensurethat there are no conflicts, is recommended.

The application process includes a formal examination and asubstantive examination of distinctiveness. After the formal examination butprior to registration, the trademark application is published in the IndustrialProperty Bulletin (Boletín Oficial de la Propiedad Industrial). Any interestedparty has 60 days from the date of circulation of the Industrial Property Bulletinto oppose such application. After the publication and if no opposition isfiled, OCPI will perform its substantive examination. If the trademarkapplication is granted, the trademark registration fee must first be paid toOCPI before the trademark will be registered. If the concession fee is notpaid, the application for the trademark will be considered abandoned.

A trademark registration in Cuba is valid for 10 years andis renewable for additional 10-year periods. However, if the trademark has notbeen used within three years of the date of registration or has not been usedfor a continuous period of three years, it may be subject to cancellation.

Filing anInternational Application through the Madrid Protocol Treaty

Cuba is a signatory to the Protocol Relating to the MadridAgreement Concerning the International Registration of Marks (Madrid ProtocolTreaty), which allows existing trademark holders to file one application with asingle office in order to register the trademark in multiple jurisdictions. Noofficial local agent is needed to file the application. Although aninternational registration may be issued, each country retains the right todetermine whether or not protection for a mark will be granted within itsterritory.

If you already have filed a trademark application or have atrademark registration issued by the USPTO, then you can submit aninternational application through the USPTO, which in turn forwardsapplications that meet all applicable requirements to the World IntellectualProperty Organization (WIPO). WIPO conducts a formal examination of theinternational application. Once approved, a mark is recorded in the InternationalRegister. The local intellectual property offices in the territories in whichthe applicant seeks protection, such as Cuba, then undertake a substantiveexamination of the application and determine whether to protect the mark.

Conclusion

For some US businesses, trademark registration in Cuba maybe the initial step before engaging in business in the island. In doing so,they must comply with the US and Cuban law. With two alternate methods toregister trademarks in Cuba available to protect the mark, businesses mustdecide which method is preferable for them.

The Latin America group at Hunton & Williams LLP willcontinue to closely monitor related developments. Please contact us if you haveany questions or would like further information regarding the registration oftrademarks in Cuba or any other change to the regulations and sanctionsgoverning the Cuban embargo. This client alert was prepared in collaborationwith the law firm of Uría Menéndez and their attorneys licensed to practice in Cuba,with whom Hunton & Williams frequently partners on Cuba-related matters.