Worldwide: Protecting Your Brands In New Markets: Iran And Cuba

Thomas W. Brooke is a Partner in our Washington, D.C. office and Jessica E. Lanier is an Associate in our San Francisco office.

HIGHLIGHTS:

  • For companies based in the United States, doing business in Cuba and Iran is no longer a completely far-fetched notion.
  • Your business may not have any plans for expanding into either of these countries, however, knowing the laws and policies governing brand protection in each country can ensure that your brand is not exploited by third parties in these markets.
  • U.S. businesses have always been able to protect their trademarks in Iran and Cuba. Even with trade restrictions, both countries incorporate carve-outs to enable entities and individuals to protect their intellectual property rights in Iran and Cuba.

For companies based in the United States, doing business in Cuba and Iran is no longer a completely far-fetched notion. In Cuba, the relaxing of the embargo promises to make this island neighbor of the U.S. available for commercial enterprises. In addition, the proposed nuclear treaty with Iran presently under discussion signifies a potentially more accessible marketplace. Your business may not have any plans for expanding into either of these countries, however, knowing the laws and policies governing brand protection in each country can ensure that your brand is not exploited by third parties in these markets. If your business does have plans to expand into one or both of these markets, you can decide if you want to provide permission to other entities to promote your brand.

The Present Sanctions Regime

The present U.S. sanctions and embargo regime includes dozens of countries. In most cases, Iran and Cuba included, these trade restrictions incorporate carve-outs to enable entities and individuals to protect their intellectual property rights in each country. The carve-outs protect:

  • filing and prosecuting trademark applications
  • receiving and maintaining trademark protection
  • filing oppositions to other registrations
  • retaining local agents to conduct these activities in order to protect one's brand

U.S. businesses have always been able to protect their trademarks in Iran and Cuba. Therefore, even if certain trade restrictions remain against Cuba (or are re-imposed) and/or the much-debated deal with Iran falls through (or evolves), taking action to protect your brand in each country is not only permissible – it is a wise business decision.

Registering a Trademark in Iran

Iran's trademark regulation is currently governed by the Patents, Industrial Designs, and Trademarks Registration Act of 2008. All Iranian and foreign nationals engaged in commercial activity in Iran may apply for a trademark. More applicable to U.S.-based intellectual property owners, entities may register their marks in Iran if the country in which their enterprise operates reciprocates protection of Iranian trademarks. Like the United States, Iran is a signatory to the Madrid Agreement and the Madrid Protocol. Under Iranian law, then, entities holding United States trademarks may register those marks in Iran.

Registration Is Crucial to Protecting Your Brand

U.S. trademark law differs from Iranian law in many respects. Trademarks may be used in Iran without registration, but an owner of a trademark that is not registered in Iran may not bring an action for infringement (criminal, which Iranian law allows, or civil). Therefore, registering your brand in Iran is critical to policing the use of your mark there. Utilization of a brand in foreign markets qualifies as "use" for the purposes of registering a mark in Iran. Therefore, no transgression of present U.S. sanctions is necessary to establish a commercial foothold in Iran in order to substantiate a registration.

The registration process in Iran is much quicker than in the U.S. – often the time from application to registration is only six months. Registration in Iran is valid for 10 years and is renewable in 10-year increments. Applicants may also apply for international registration through the Madrid Protocol. Cancellation proceedings may be brought against a trademark that has not been used in Iran or abroad for three years, where the mark holder can offer no good cause for the lack of use.

Registration Red Flags

Iranian law prohibits the registration of several categories of logos, words, seals, designs, or pictures, including (1) any insignia of the Iranian government, including the flag; (2) marks of official institutions such as the Red Crescent or the Red Cross; (3) symbols contrary to public order and good morals, including Israeli marks and marks of Israeli companies (Israeli companies and citizens are specifically prohibited from applying for trademark registration in Iran); (4) words creating an impression of official connection with Iranian authorities; (5) a mark that so closely resembles the registered mark of another that it will deceive ordinary consumers; (6) alcoholic beverages; and (7) pictures of women.

Prospective applicants for trademark protection in Iran must remain wary of any "boycott" questionnaires received from counsel in that country. Iran and other countries in the Middle East may ask companies if they do business in Israel. It is a violation of U.S. law to provide any such information. It is best to consult with counsel before responding to any such inquiries.

Cuba

Cuba has a slew of legislation, regulations and decrees governing trademark registration and protection. Helpfully, for U.S. companies, Cuba is also a signatory to the Madrid Agreement and the Madrid Protocol.

Registering a Mark in Cuba

Cuba maintains a first-to-file regime. If an applicant has no name-recognition based on its use of the brand or was not the first user of the mark, it can still secure registration for the mark, so long as it is first to file an application. This factor, more than any other, should encourage U.S. mark holders to apply for registration in Cuba. Use (either in Cuba or abroad) is necessary to preserve a mark's validity. If the owner of a registration in Cuba does not use a mark for three years, a third party may petition for the registration's cancellation. As Cuba is a signatory to the Madrid Agreement and Protocol, mark holders may also register through the Madrid mechanisms.

Registration Red Flags

Cuba now prohibits registration of a mark identical to a registered mark or application for the same products or services. A number of U.S.-based companies (Denny's and Kohl's, for example) have had their trademarks registered in Cuba by illegitimate registrants. Since 1999, Cuba has had provisions in its trademark law to protect "famous" marks. This protection includes a prohibition on registration of a trademark that is a reproduction (total or partial) of a "notorious" mark belonging to a third party. To be actionable, this use must raise the risk of confusion or association with the famous mark, cause a risk of dilution of value or fame, or ride the coattails of the famous mark. Given the decades-long embargo, proving a U.S. mark is famous in Cuba is rather difficult. U.S. companies have not been able to do business in Cuba and have, therefore, not established a presence for their brands. Moreover, many Cubans currently have only limited Internet access though this will likely change in the near future as commerce opens up in the country. These facets of Cuban trademark law make it even more crucial to register your U.S. brand as soon as possible.

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.

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