This post faces the problems by international brands, returning to countries after years of boycotts. Some of you may recall the trademarks problems faced by multinationals in South Africa in the Apartheid era, only to find that other were mischievously using their brands. There are some parallels with the situation in Cuba today, though the politics are different -- and so too is the legal framework within which problems fall to be resolved.
The opening of commercial relations between Cuba and United States is tempting some individuals to jump at the chance to register US trade marks in order to force trade mark holders to negotiate their entrance into the Cuban market. This means the emergence of the Cuban “trade mark troll” and “trade mark hijacking”.
A group of people has started to file applications of US trademarks, including some very famous ones. One of these is a Cuban citizen, who has applied to register at least 65 well known US trade marks including CHASE and NFL; in most cases he has applied for logos or device trademarks.
Cuba is a member of the Paris Convention but it is difficult to prove that a mark is well-known in Cuba when products bearing US trade marks have not been present on the Cuban market for many years.
An interesting and important exception to the territoriality principle in Cuban law can be found in the little-known General Inter-American Convention for Trade Mark and Commercial Protection (Washington 1929). This convention remains valid and in force today in all original contracting countries. Unlike the Paris Convention priority right, it is neither limited in time nor applied as of right. It is unlike the Paris Convention’s “well-known marks” protection in that the senior user does not have to prove fame in the country in which it seeks protection, but merely that the junior user was aware of the senior user’s rights in a member country.
Does the Cuban Trade Mark Office have the legal and political ability to enforce the provisions of the Washington Convention? This is a big question.