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By Peter Leung
The thawing of U.S.-Cuba relations means American companies should consider registering their marks in the island nation to head off trademark squatters, lawyers said.
The expectation of increased trade between the countries has led to more unauthorized registrations of trademarks used by American companies, Katherine Van Deusen Hely of Caribbean IP PLLC said April 5 at the American Bar Association’s Annual Intellectual Property Law Conference.
Squatters can register trademarks for brands in Cuba in cases where U.S. companies don’t have Cuban registrations for their brands, Hely said. Even if U.S. companies have no immediate plans to do business in Cuba, they should protect their brands by registering their trademarks there because the law provides for a three-year grace period where a registered trademark can’t be canceled for nonuse, she said.
Timely registration is particularly important with Cuba’s first-to-file trademark system which differs from the U.S., where registration is based on earliest, continuous use of a trademark.
American companies shouldn’t expect too many surprises because Cuban trademark law is up- to-date and Cuba is a signatory to most of the major IP treaties, Christine Haight Farley of American University Washington College of Law, said. The country is part of the Madrid Protocol, the system that allows an applicant to make a single filing to register for trademarks in multiple countries, and also uses the Nice system for classifying goods used by most countries.
Besides the first-to-file system, there are important differences for American trademark attorneys to note. In particular, disclaimers of descriptive words in a trademark are handled differently, Roberto Albin of the Law Office of George C. A. Moore PA in West Palm Beach, Fla., who practiced trademark law in Cuba, said.
In the U.S., trademark applicants can disclaim things such as single descriptive words from their marks as in, for example, the words “whole” and “foods” in “Whole Foods.” In Cuba, there has to be at least one distinctive, non-descriptive element left over, so the applicant would have to handle the disclaimer differently, Albin said.
Some non-IP obstacles also remain. The challenge of paying Cuban lawyers is compounded by the fact that clients generally have to pay all legal and filing fees in advance, Hely said. Even though the U.S. government will allow companies to file for Cuban trademarks and send payments, American financial institutions aren’t set up for that, so companies must make alternative arrangements.
Rights holders “know how to reach out to foreign counsel, but they don’t know how to make payments,” she said. “And so they get into a bind, especially if there’s a deadline looming.” Intermediaries, or law firms that use banks in countries such as Canada, can help with this problem, she said.
The scope of permitted activities is also affected by the ongoing embargo. U.S. companies can get general licenses from the Treasury Department’s Office of Foreign Assets Control that allow for various activities, including trademark registration, maintenance and some enforcement-related activities, Hely said. However, other trademark-related activities, such as using your trademark or engaging in an IP transaction, would likely need a specific license.
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