On December 17, 2014, U.S. President Barack Obama announced plans to ease the country’s 54-year-long Cuban embargo. The U.S. government must revise a complex web of laws to fully end the embargo. These laws also affect global brands because they include restrictions against non-American businesses and foreign-based subsidiaries of U.S. businesses. Nonetheless, American, Cuban and other international trademark owners can take steps to protect their marks today.
Potential U.S.-Cuban trade and tourism provides a great business opportunity for U.S. and global mark holders seeking to take advantage of a new Caribbean market. Cuba possesses the largest economy in the Caribbean region and imports $13.6 billion in goods, second in the Caribbean only to the Dominican Republic. The United States currently provides only 4.3 percent of Cuba’s imports. Spain serves as the largest European exporter to Cuba, providing 8.9 percent of goods.
Completely ending the embargo requires legislative action. The Obama administration has begun and will continue to review and revise various governmental regulations to increase travel and trade with Cuba in the near future. In the meantime, the many restrictions on travel and trade remain.
Treasury regulations issued during the Clinton administration already allow for the protection of Cuban marks in the United States and U.S. marks in Cuba. Moreover, the regulations allow global brands both to do business with the United States and protect their marks in Cuba without fearing penalties. Specifically, the regulations provide a general license to register and renew Cuban marks, receive those marks and prosecute and defend opposition and infringement proceedings. The regulations also authorize the payment of government and professional fees for these acts to Cuba and Cuban nationals.
As the United States and Cuba move toward normalized relations and trade, non-Cuban mark owners may consider renewing or proactively protecting their marks in Cuba. Importantly, U.S. mark owners retain the marks they registered in Cuba before 1959, subject to payment of renewal fees. U.S. and global mark owners seeking protection of their marks in Cuba should work with an attorney who can assist them in complying with the U.S. Treasury regulations so as not to run afoul of the laws.
The Cuban trademark registration process resembles that of other Caribbean jurisdictions and information regarding the process can be found in the INTA Country Guides
. The Cuban Office of Intellectual Property examines applications and publishes marks for opposition purposes; marks are then registered absent opposition or objection. Cuban law provides a 10-year registration term and 10-year renewal terms.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2015 International Trademark Association