As the U.S. and Cuba progress towards normalizing trade relations, many U.S. companies are contemplating whether it makes sense to do business in Cuba. While some companies already plan to enter the Cuban market, others have no plans to do so. Regardless of where your company falls on that spectrum, failing to protect your brand in Cuba could create major obstacles down the road, even if you have no immediate plans to offer products or services in Cuba.
Given the global business of counterfeits and knockoffs, thanks in large part to ecommerce, companies should seriously consider filing for trademark protection in Cuba. While only 5% of Cuban citizens currently have access to the Internet, that is expected to change. With Google's plans to expand access to the Internet in Cuba, it's just a matter of time before online sales of counterfeit products enter the Cuban market.
Furthermore, because Cuba is a “first to file” country with no use requirements to obtain a trademark registration, opportunists with no “legitimate” trademark rights in Cuba may file applications and secure exclusive rights to your trademarks before you, potentially blocking you from using and registering your trademark in Cuba in the future. In fact, a number of trademark applications for well-known American brands like FEDEX, UBER, CAPITAL ONE, CHASE, DENNY'S, CHIPOTLE MEXICAN GRILL, JETBLUE, IHOP, KOHL'S, and OFFICE DEPOT have already been filed by Cuban-based entities and citizens that have no apparent affiliation with those companies.
If that is not enough for you to chew on, there's even more. Here are the top five reasons to file for trademark protection in Cuba:
- You don't need to use your trademark in Cuba to obtain a registration
As noted above, because Cuba is a first-to-file country, an American company can register its mark even if it has not yet entered the Cuban market.
- The trademark application process in Cuba is relatively simple
The Cuban trademark application process is not that much different than other Caribbean countries or even common law jurisdictions. Like the U.S., the EU, Canada and numerous other jurisdictions, Cuba is a member of an international system for registering trademarks in multiple jurisdictions around the world called the Madrid System. Companies can file one trademark application with one office and register their trademarks in multiple countries, including Cuba. Companies also have the option of filing a national application directly through the Cuban Industrial Property Office by using local counsel. Filing via local counsel — which may be desirable if, for instance, expanded trademark coverage is needed — is potentially more complicated due to certain restrictions on the transfer of funds between U.S. and Cuban banks. In some cases it may be necessary to use a third-party liaison law firm (e.g., in Mexico) to avoid these issues.
- Obtaining a trademark registration in Cuba is relatively inexpensive
Assuming no one has already filed for your trademark or a similar mark and there are no other major substantive issues with your application, the cost to obtain a Cuban trademark registration is relatively low. All in, the cost is estimated to be approximately $1,200 – $1,500 if you are filing a national application. This amount includes government filing fees and local attorneys' fees, although local attorneys' fees could vary and you may incur additional attorneys' fees if a third-party liaison counsel is needed. If you are filing through the Madrid System, and again assuming there are no major substantive issues, the cost to obtain a registration in Cuba could be less.
- It may be difficult to take back your brand in Cuba from pirates
If someone else files for your trademark in Cuba before you, one of the only viable recourses to take back ownership is to oppose the infringing application based on the fame of your trademark. However, establishing that a U.S. brand is famous in Cuba is difficult, since American companies have been prohibited from doing business in Cuba for decades. Typically, American companies will submit evidence of online ads, marketing, and media coverage to show that its brand is famous in other jurisdictions. However, it remains to be seen whether such information would even be relevant in Cuba since, as noted above, only 5% of Cuban citizens currently have access to the Internet.
- Cuba could become the next hot spot for your business
As the Obama Administration eases travel and trade restrictions to Cuba, it makes sense to consider Cuba as a potential new market for business opportunities. Several U.S. airline companies are seeking permission from the Department of Transportation to provide direct flights to Havana and Starwood Hotels and Resorts announced a contract to manage several hotels owned by the Cuban government. As tourism increases, travelers will be looking for well-known brands in the country. Therefore, even if Cuba is not currently on your radar for business, it may be soon as tourism increases. Having already obtained a trademark registration in Cuba will make it that much easier for your company to establish its brand in Cuba before entering the market.
