Bad Faith Applications are on the Rise in Cuba

UPDATE: CUBA

President Obama’s December 2014 announcement that diplomatic relations between the USA Cuba will be restored after more than 50 years of isolation and enmity reignited the interest of many US brand owners in the Cuban market. 

US brand owners consequently sought to review their local trade mark portfolios and examine the extent of any IP rights in the country.  Contemporaneously, a number of Cuban individuals also tried to exploit the situation by filing local trade mark applications for famous US brands.  

Due to Cuba’s “first-to-file” system and the fact that prior use of a mark is not required to obtain a registration, if successfully registered, these “bad faith” applications could be very damaging to US companies seeking to enter or re-enter the market after so many years and secure desirable IP protection.  Opposition and invalidity proceedings in Cuba can be lengthy, costly (all evidence should be submitted in Spanish) and unpredictable.  

If a US brand owner has any interest in Cuba they should consider filing a defensive trade mark application immediately, rather than risk facing the brunt of opposition/invalidity costs. Where opposition and invalidity proceedings cannot be avoided, fresh applications should be filed simultaneously in order to protect the brand owners’ position pending the outcome of those proceedings. 

Another option is to seek to pay-off the bad faith applicant and have the mark assigned. This of course depends on the value of the brand and the amount requested.  Also, given that it generally takes 12 months for the Cuban Office to process an assignment application this may delay any use of the mark in Cuba which is dependent on a valid registration. 

Finally, it is also prudent for US entities to consider whether they have adequate copyright and patent protection in Cuba.