This blog post is Part II of a two-part series on strategic business reasons to seek protection of trademarks in Cuba now. Read Part I here.
- The Opening Of U.S. Travel And Tourism In Cuba Means More Americans In Cuba Who Want to See American Brands
Let's face it. American tourists want to see familiar brands when traveling abroad. They want to experience the authentic culture and history of Havana while sipping a Starbucks coffee. A relaxation of restrictions on U.S. travel (already begun) and tourism (on the horizon) in Cuba –means more Americans in Cuba, seeking familiar American brands.
- Cost Of Proactive Registration Is Reasonable
The government fees for filing a trademark application in Cuba are only US$300 for one mark in up to three classes (compare this with the U.S. government fees of about US$275 per mark per class). Cuban counsel fees for preparation and filing of the application will vary, but are typically in the neighborhood of US$700. This means an application for a registration of a trademark in Cuba will probably take only about a US$1,500 bite out of a company's budget. When you consider the protection afforded to what is arguably a company's most valuable asset, and the potential risks and costs of not having a registration in Cuba, the return on investment is staggering.
- But Cost Of 'Rescuing' A Brand From Unauthorized Registration Is Not
If a U.S. company discovers its brand has been registered in Cuba by an unauthorized party, it will be faced with the challenge of either proving the renown of its mark in Cuba and/or proving non-use of the mark by the third party registrant. In either case, the burden of proof is on the U.S. company and will require that U.S. company to put up substantial evidence and arguments to support its claims. In the case of a company trying to prove the renown of its brand in Cuba, there is an obvious challenge in that the brand likely has never actually been used in connection with goods or services offered in Cuba.
- With Limited Exception, Registration In Cuba Is The Only Way To Get Exclusive Rights In A Brand There
As noted above, Cuba is a first-to-file jurisdiction. The first to file an application and obtain a registration for a trademark is generally the first to acquire exclusive rights to that trademark in Cuba. For a U.S. company seeking exclusive rights to its mark in Cuba, this is a fantastic prospect. Unfortunately, the same goes for an unauthorized third party looking to secure exclusive rights in a trademark purely to hold those rights hostage.
- Why Not?
Registration in Cuba is relatively easy, inexpensive, and low-risk. Failing to register in Cuba can create major headaches, can be costly, and may present significant risks. For U.S. companies that have not yet – but plan to – enter the Cuban market, protection of a trademark there is critical. For U.S. companies with no current plans to enter the Cuban market, these companies must ask themselves: how much pain might be caused by an unauthorized third party hijacking our brand in Cuba? If the answer registers on the pain scale at all, that company should be giving serious consideration to protection of its marks in Cuba, without delay.
Disclaimer: This Alert has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice. For more information, please see the firm's full disclaimer.
