lunes, 12 de enero de 2015

U.S. trademarks and the new U.S.-Cuba reality and its potential

U.S. trademarks and the new U.S.-Cuba reality and its potential
BY JORGE ESPINOSASPECIAL TO THE MIAMI HERALD
01/11/2015 2:00 PM 01/11/2015 7:00 PM

Less than 15 years ago, in retaliation for a U.S. court decision against
the Cuban government over the use of the trademark "HAVANA CLUB," Fidel
Castro threatened to make his own counterfeit Coca-Cola. Although Castro
never carried out his threat, the incident highlights the turbulent
history of trademark rights between the two countries. With President
Barack Obama's recent announcement of normalization of relations, we are
on the cusp of the most pronounced commercial change in U.S. relations
with Cuba in 50 years. Its effect on U.S. owners of trademarks will
eventually have a significant impact on the future economy of Cuba and
of South Florida.

The Cuban embargo prohibits most types of commerce with Cuba absent a
special license from the Office of Foreign Assets Controls (OFAC).
However, the law provides a general license, which does not have to be
specifically applied for or renewed, that allows nationals of either
country to legally spend money to register, prosecute or oppose a
patent, trademark or copyright. The general license significantly does
not provide for court enforcement of trademarks or a waiver of the use
requirement, thereby creating a significant obstacle to the proper
protection of Cuban trademarks in the U.S.

In reliance on the general license, some U.S. companies have registered
their trademarks in Cuba anticipating future change allowing trade and
commerce. These registrations normally come in waves during times when
the possibility for change is in the news. The current policy change is
likely to generate a new wave of registrations. However, changes in the
status quo are likely to be slow due to the 1992 Cuban Democracy Act
(the "Torricelli Law") and the 1996 Cuban Liberty and Solidarity Act
("Helms-Burton Act") which limited the authority of the Executive Branch
to modify or end the embargo. The latter of the two particularly makes
it illegal to exploit property, including intellectual property that was
confiscated without compensation by the Castro government. A U.S.
business wishing to purchase and protect a previously confiscated Cuban
trademark would be prohibited by this Act. This is particularly
significant in South Florida with its large number of confiscated
trademarks such as La Ideal (retailer), Havana Club (rum) and Partagas
(cigars).

What changes could we see in the short term in view of this legislative
barrier? While Obama cannot undo all aspects of the embargo, he still
has the power to modify the regulations that govern its enforcement.
Such changes could include an amendment of the regulation to allow
excusable non-use and court litigation under the general license. This
would obviate the need to request a special license for such normal and
customary trademark transactions.

A significant change that has already been announced is the relaxation
of banking and credit restrictions between the two countries. Cuban and
U.S. banks would not previously accept direct exchanges of money
transfers. This has traditionally complicated the protection of
trademarks in Cuba and has raised expenses by requiring payments through
third countries or intermediaries.

A requirement that cannot easily be solved without legislative
intervention and inter-country negotiation is the use requirement. In
the U.S., a trademark that is not used can be deemed abandoned and
cannot be renewed. Before 1982, the inability to use the trademark due
to the embargo was excused, but this exception was withdrawn. Like the
U.S., Cuba has a legislative requirement that trademarks must be used in
commerce to avoid claims of abandonment. Although this requirement is
relaxed for trademarks deemed famous, it is in effect for non-famous
trademarks. After several years of non-use, a third party can petition
to cancel a trademark. As a result, the inability of U.S. companies to
use the trademark to promote its goods or services creates a serious
vulnerability.

For South Florida, such a change would be important. Many small local
businesses may want to begin registering their trademarks for
restaurants, construction services and products. Names that are
recognized by Cubans on either side of the Florida Straits, although not
famous per se, can have enormous value to local businesses should
commercial restrictions be lifted. However, since the mark cannot be
used on the island under the current laws, the applicant will be playing
a waiting game hoping that his or her investment will become usable
before the passage of time renders it vulnerable to claims or
abandonment or nonrenewable.

Although changes are not likely to come quickly, the doors of
imagination have been opened as to the possibilities for Americans and
U.S. businesses in a future Cuba. This is likely to increase interest in
the registration of trademarks on the island.

Florida Board Certified in intellectual property law, Jorge Espinosa, a
Cuban American and founding member of the Miami law firm of Espinosa |
Trueba, P.L., centers his practice on the domestic and international
protection of trademarks, patents and copyrights. jespinosa@etlaw.com.

Source: U.S. trademarks and the new U.S.-Cuba reality and its potential
| The Miami Herald -
http://www.miamiherald.com/news/business/biz-monday/article5709570.html

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