Unfair Competition in Cuba
Trademark rights, among other intellectual property rights, have gained an increased demand for protection due to their economic value. Many trademark owners may believe that because their trademarks have become well-known and famous to the public in many countries, they will serve as an obstacle to applications in other jurisdictions. However, there is no uniformity in the intellectual property regulations and legislations among all jurisdictions, leading to different treatment of intellectual property rights. This leaves an open opportunity for some people to take advantage and misappropriate another’s IP rights.
In Cuba, where the ‘first-to-file’ rule applies, the trademark law prohibits the registration of trademarks that are identical or confusingly similar to previously registered trademarks. In other jurisdictions, this principle applies to famous or well-known marks even if the mark is not yet registered within that jurisdiction. Yet, Cuba does not recognize many well-known and famous trademarks that are not locally registered, generally, because those marks have not substantially reached the local market and consumers.
Over the years, local and foreign applicants have taken advantage of the lack of recognition of this principle. Some applicants have obtained registrations of well-known trademarks that were neither well-known nor legally protected in this jurisdiction. Other applicants filed applications but were not granted protection. The most notable example of the latter occurred in 2014 when an applicant tried to register over 60 well-known US trademarks, such as Capital One, Carnival, Chase, Chick-Fil-A, and many others, that were not well-known or protected in Cuba. Although the applicant did not obtain protection, the brand owners had to file an action to enforce their rights.
Our team at Complete Intellectual Property Services can assist brand owners further understand the Intellectual Property legislation in Cuba. Our trademark Associate, Isidro Maestre, is a trained Cuban Attorney who can assist with the protection of IP rights in Cuba, making the process as seamless as possible. As a team, we are monitoring the Cuban Intellectual Property Registry and how they are handling the matters that face these challenges. In 2018, for example, a law granting protection against unfair competition was implemented. It was a positive step towards the enforcement of IP rights for brand owners.
We look for similar legislation as seen in other jurisdictions to protect the rights of brand owners. Notwithstanding, the local IP Office has no legal obligation to recognize trademarks that have not been registered in Cuba. We encourage brand owners to be proactive in seeking protection of its IP rights in Cuba to ensure that customers can trust what their brands represent. Contact us to learn more about Intellectual Property protection in Cuba.
|Written by:||Isidro Maestre, Trademark Associate and Cuban Attorney|
|Date:||March 20th, 2023|