United States: Battling Trademark Piracy In Cuba

The recent restoration of diplomatic relations between the United States and Cuba has sparked the interest of U.S. companies in protecting their intellectual property in Cuba. While an exception under current U.S. sanctions allows U.S. companies to file and maintain Cuban trademark registrations, many trademark owners have not seen any benefit in doing so until now, since other U.S. sanctions block the ability to trade. Although the embargo remains, the Obama administration has amended the Cuban Assets Control Regulations ("CACR") and Export Administrations Regulations ("EAR"), and further changes in policy are currently on the table. Trademark pirates have been quick to take advantage of the evolving landscape. As an example, an individual recently filed sixty-five Cuban applications for third-party logo trademarks that are well known in the U.S. and throughout the world. That person was not alone, and more are likely to follow.

After being inactive in Cuba for over half a century, or never having been present before, the best way for U.S. companies to deal with trademark piracy is to take pre-emptive action by securing Cuban trademark registrations. But for some trademark owners, it may already be too late. Since Cuba is a "first-to-file" country, it may seem at first glance that U.S. trademark owners without Cuban registrations have no recourse for preventing a pirate from stealing their spot on the registry. Fortunately, Cuban trademark law provides several means for challenging trademark applications under these circumstances, namely in the absence of a prior application or registration. This article addresses a number of grounds for opposing Cuban trademark applications, and the potential effects of the U.S. case, Empresa Cubana del Tabaco v. General Cigar Co., Inc., No. 13-1465 (Fed. Cir. 2014) ("Empresa Cubana"), on oppositions based on the General Inter-American Convention for Trade Mark and Commercial Protection (also known as the "Washington Convention" or the "Pan-American Convention").

Cuba is a party to almost all international intellectual property treaties, and local legislation has been structured to satisfy international obligations. When Cuba joined the World Trade Organization ("WTO") in 1999, it modified its trademark law by enacting Decree Law No. 203, which meets the requirements of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS"). (Procedural regulations related to Decree Law No. 203 are provided under Resolution Number 63/2000.) As a contracting party to TRIPS, Cuba is also a party to the Paris Convention, which provides for the protection of famous trademarks under Article 6 bis. In compliance with the Convention, the famous-marks doctrine is implemented through Article 17.1 (d) of Decree Law No. 203, which prohibits registration of a trademark that is a total or partial reproduction of a notorious mark belonging to a third party, when their use could: (1) cause a risk of confusion or association with the notorious mark; (2)cause a risk of diluting the distinctiveness of the notorious mark or its commercial value or fame; or (3) unjustly benefit from the fame of the notorious mark.

Proving that a mark is famous in Cuba, however, can be somewhat challenging for U.S. companies, since the embargo prohibits them from using their marks in Cuba. Furthermore, because many Cuban nationals have limited Internet access, evidence of online marketing is given little weight, if any, unlike in many other countries where a trademark's online presence is considered an effective method of reaching international consumers. For this reason, lawyers need to be creative in arguing the fame of a U.S. trademark under the Paris Convention. In some cases, it might work to show that a trademark has been registered and used worldwide for an extended period of time, particularly in countries where Cuban nationals often travel. Further, a mark could be considered famous in Cuba if a particular sector of the Cuban population is familiar with the trademark. For example, it may be that those belonging to a particular profession have specialized knowledge of international brands within a certain industry, due to the nature of their work.

Cuba is also a party to the Pan-American Convention. Article 7 of the Pan-American Convention offers much broader protection than the Paris Convention, as it does not require that the senior trademark be famous. Under Article 7 of the Pan-American Convention, the owner of a trademark protected and used in one member state (the U.S.) may oppose an application for an interfering mark by a third party in another member state (Cuba), if the third party had knowledge of the existence and continuous use of the senior mark. (Grounds for cancelling a trademark registration are separately addressed in Article 8 of the Convention.) Thus, although the fame of a trademark may help to show that an applicant had knowledge of a senior mark, it is not essential. Moreover, the Pan-American Convention is self-executing, so the exact language of the treaty is directly enforceable in all member countries, including Cuba. Oppositions based on Article 7 have been successful in Latin America, particularly in Colombia and Peru. Although these decisions are not binding in Cuba, they may be persuasive.

How the Cuban Trademark Office will apply the Pan-American Convention in deciding oppositions by U.S. companies is difficult to predict. An ongoing case in the U.S., Empresa Cubana (noted above), may affect how the Cuban Trademark Office interprets the treaty. Both parties in this case manufacture and distribute cigars under the COHIBA trademark, Empresa Cubana del Tabaco ("Empresa") being a nationally-owned Cuban company, and General Cigar Co., Inc. ("General Cigar") a U.S. company. By way of background, the U.S. Patent and Trademark Office rejected a trademark application by Empresa for COHIBA based on General Cigar's prior registrations for COHIBA. Empresa filed an infringement action against General Cigar seeking, inter alia, to cancel General Cigar's registrations under Article 8 of the Pan-American Convention. Whether or not the registrations will be cancelled under the Convention has not yet been decided, since the matter was originally dismissed based on lack of standing. The case has been remanded to the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office ("TTAB") to decide the arguments under the Pan-American Convention, and at this writing we await a decision. Although the COHIBA case does not directly involve an opposition filed under Article 7, the outcome could well reflect the U.S.'s stance on whether the Pan-American Convention is enforceable and whether the rights of Cuban trademark owners will be recognized in the U.S. The TTAB's decision could have a lasting impact on the rights of U.S. trademark owners in Cuba, since the Cuban Trademark Office may choose to decide oppositions based on the Convention in a reciprocal manner.

Copyright infringement can also be the basis for an opposition in Cuba. Under Article 17.1 (h) of Decree Law No. 203, a mark cannot be registered when use of the applicant's trademark would infringe a third party's copyright. Since Cuba is also a contracting party to the Berne Convention, it is not necessary to obtain a copyright registration in Cuba in order to enforce the copyright. Furthermore, under the Berne Convention, a copyrighted work recognized in one member country (the U.S.) must be recognized in another member country (Cuba), and afforded the same protections as nationally-owned copyrighted works. This basis for opposing could be useful when dealing with applications for design marks/logos, as in the case of the trademark pirate who filed sixty-five Cuban applications for logo trademarks, mentioned above.

In Cuba, as a general principle of law, a trademark cannot be registered in bad faith. Furthermore, there is a presumption of good faith when a trademark application is examined, absent proof to the contrary. Although "bad faith" is not specifically listed as a ground for opposition in Decree Law No. 203, it is addressed in Article 57, which states that a trademark registration can be cancelled if the trademark is famous in Cuba and the application was filed in bad faith. Along these same lines, Article 17.1 of Decree Law No. 203 provides that an opposition can be filed when it is evident that a trademark application was filed to perpetrate, facilitate or strengthen an act of unfair competition.

We cannot predict with any certainty how the Cuban Trademark Office will approach the issue of trademark piracy as relations between the U.S. and Cuba continue to evolve. For this reason, when filing an opposition, it is best to assert all grounds available in a given case, in the hope that one of them will provide a basis for deciding in favor of the legitimate owner. As mentioned above, to avoid this issue entirely, it is important for U.S. companies to take pre-emptive action in Cuba by registering any trademarks that could be targeted by pirates. In addition to the piracy threat, when the Cuban market becomes available to U.S. companies, the Cuban Trademark Office will likely be flooded with applications, which may result in additional unanticipated obstacles. Given Cuba's well-developed legislation on the protection of trademarks, its high participation in international treaties, and the Cuban Trademark Office's apparent reputation for fairness, we have reason to hope that the first trademark pirates will be stopped in their tracks, deterring others from following in their footsteps.

This article was first published in the June, 2015 issue of Managing Intellectual Property.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Frankfurt Kurnit Klein & Selz
Lewis Roca Rothgerber Christie LLP
Lewis Roca Rothgerber Christie LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Frankfurt Kurnit Klein & Selz
Lewis Roca Rothgerber Christie LLP
Lewis Roca Rothgerber Christie LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions