CubaNews / May 2003
By Larry Luxner
You won’t find McDonald’s, Blockbuster Video, Holiday Inn or Wal-Mart on the streets of Havana. But all these well-known U.S. companies — and thousands more — have registered their trademarks with the Cuban government in preparation for the day the U.S. trade embargo is lifted and they can operate freely throughout the island.
To register a trademark in Cuba, foreign companies must go through one of the five entities authorized to act as intellectual property agents: Servicios Jurídicos Lex S.A., Bufete Internacional S.A., Claim S.A., CONAS and Consultoría Jurídica Internacional S.A.
One of those companies, Lex, has the lion’s share of registrations, with 50% of the 4,000 or so foreign trademarks on file with Cuba’s Intellectual Property Office. The other half is split among the other four companies, said Ada Acosta Martínez, former director of Lex and now an advisor to the law firm.
“We have experience that the other companies don’t have,” she told CubaNews in an interview last month. “The Cuban Chamber of Commerce was the only one that could offer this service before, and we are the successor to their Departamento de Marcas y Patentes (Department of Trademarks and Patents), so we have lots of experience.”
A quasi-private company that employs 25 people, Lex is housed in a former mansion across the street from the famous Karl Marx Theater in suburban Miramar.
Last year alone, Lex registered 350 trademarks, charging its clients $300 per registration. This doesn’t include the $250 official fee companies must pay the Cuban government.
Trademarks must be renewed every 10 years, and for this, Lex charges $250 (in addition to the official fee of $300). Other fees include trademark searches ($80 plus official fee of $50); replies to official actions ($75 plus official fee of $70); cancellation ($500 plus official fee of $200) and registration certificate ($30 plus official fee of $140).
Of all trademarks registered in Cuba, some 85% belong to U.S. firms. The rest are European, Canadian and Latin American companies, said Acosta.
“Before the mid-1990s, there were few applications from U.S. companies, but after 1996, U.S. companies began to show more interest,” Acosta said. “Our law is clear in regards to trademark protection, and this law applies to everyone, whether they are Cubans or foreigners. Cuba is a member of the WTO. Therefore, the TRIPS agreement applies in Cuba. Also, Cuba is a member of the Paris Convention, so prior rights can be claimed.”
Under Cuban law, all applications filed with the government’s Intellectual Property Office are subject to a formal examination within six months of the filing date. After that, the application is published in the Intellectual Property Bulletin, and the law grants two months to file an opposition.
The next step is the issuance of a substantive examination from the government and a conclusive report, in which the trademark is approved or rejected. Companies whose applications are rejected have 30 days to file an appeal before the general director of the Intellectual Property Office.
If that office rejects the trademark, another appeal may be filed with the Provincial Court of the City of Havana within 30 days.
Trademarks remain in force for 10 years from the original date of application, and can be renewed every 10 years. The renewal must be filed within the six months prior to the date of expiration; companies don’t need to prove use of the trademark when renewing.
However, any changes of name, address, usage or assignments must be recorded and on file with the appropriate authorities.
“In accordance with Cuban law, a trademark expires when the owner has not made effective and real use of the trademark in Cuba within three years,” said Acosta. “In the case of a U.S. company, the lack of effective and real use is not an issue, because the [embargo] isn’t the company’s fault. For the Cuban government to cancel the mark, someone has to solicit a ‘cancellation of no usage’ application. So far, this hasn’t happened.”
On the other hand, some Cuban “pirates” have registered trademarks that aren’t theirs, hoping to cash in later on — much the same way people reserve desirable Internet domain names and later attempt to sell those names to companies that want or need them.
“There have been problems not only with Cubans but also foreigners who registered well-known trademarks that didn’t belong to them,” Acosta told CubaNews, listing Calvin Klein, Old Spice, McCain’s, Hard Rock Cafe, Kotex and Winchester among the U.S. trademarks that have been pirated in Cuba.
“At that time, the law wasn’t established. These cases happened when the real companies tried to register their trademarks here and found that they were already registered,” she said. “These days, we detect this, because these companies hire us to do searches, and the marks are published in a bulletin. Before, we didn’t do this.”
Acosta added that “it’s not really a crime to register a name that isn’t yours. The government has no sanctions against such people.”
Interestingly, several European companies have attempted to trademark well-known personalities such as Fidel Castro, Jose Martí and Che Guevara, but Cuban law doesn’t prohibits this. Nor does it allow the trademarking of generic terms such as ron (rum), jabón (soap) and the like.
Also on the no-no list, said Acosta, are geographic terms, descriptive terms, national symbols such as the Cuban flag and “anything considered immoral.”
The lawyer wouldn’t reveal her firm’s annual billings, saying only that “we earn more from new applications than from renewals.” She also declined to discuss specific companies because of current political sensitivities.
Nevertheless, during last September’s U.S. Food & Agribusiness Exhibition in Havana, Lex sponsored a seminar on how to register trademarks in Cuba. At least 70 executives attended the meeting, and several companies — including the USA Rice Federation, Gerber Foods and Marsh International — ended up as clients of Lex.
Overshadowing the trademark issue, however, is the Bush administration’s defense of Section 211, a legal clause promoted by Bacardi & Co. Ltd. that strips the Cuban government’s right to defend its Havana Club trademark in the United States.
In the face of an outcry from U.S. executives, U.S. Trade Representative Robert Zoellick has promised that 211 — approved in 1998 — would be amended to comply with a January 2002 ruling by the WTO. That would extend 211’s denial of trademark rights to brand names that have been expropriated by governments around the globe.