A new decision from the Cuban PTO rejects a bad-faith filer attempt to register a well-known trademark by recognizing reputation in Cuba. The Cuban PTO is now on alert for bad faith filings of well-known trademarks and this case should give trademark owners confidence, and the industry a precedent, that such applications will be rejected on the basis of bad faith.
On December 28, 2017, the Cuban PTO issued its final examination report rejecting International IP Holdings, LLC’s trademark application BLUETOOTH on the basis of bad faith, imitation and unfair competition. Although there had been some prior cases of bad faith filers in Cuba, this time the applicant was a US-based company, which added another element of complexity for the Cuban PTO. The decision may serve as a precedent in the other applications filed by International IP Holdings and future bad faith applications of well-known brands filed in this market.
On your marks …
Trademark trolling became a hot topic when diplomatic relations between the US and Cuba were relaxed in 2014 and trade looked set to take off between them. Unfortunately, the market in Cuba opened up too fast for Cuban regulation: amongst the forerunners in the trademark race were companies like International IP Holdings, LLC, who filed a great number of trademarks of high-profile companies in bad faith from its base in Delaware.
International IP Holdings had targeted dozens of famous US marks that were likely to be unknown in Cuba. Reputation is very difficult to prove in Cuba, particularly that of a US company, but in this case, there was an express recognition of Bluetooth’s reputation. This now gives hope for other trademark owners to get their marks recognized as well-known in Cuba.
While the Trump administration reversed Obama’s plans to restore diplomatic relations with Cuba and restricted brand owners’ ability to enter the Cuban market, its new policy still appears to allow them to register their marks there, and it is important that they should do so.
The race is on
In a first-to-file country like Cuba, the runner-up in the race to trademark its valuable assets gets a headache, not a silver medal. Cuba is now a niche for trademark trolls due to the decades of embargo. Trademark owners should secure their rights, even if they do not have real commercialization plans. If they don’t, and fall into the spiderweb of a trademark troll, they may find escape to be costly, let alone uncertain. By comparison, the cost of obtaining a trademark registration in Cuba is extremely small.
It is hoped that this precedent groundbreaking action for Bluetooth will provide a safety net for companies who have already fallen foul of fraudsters. For all other major US and international brands, it is a wake-up call!
US and multi-national companies need to safeguard their valuable trademarks in Cuba before the trademark trolls do, even if they have no immediate plans for entering the Cuban market. This is especially true given Cuba’s increasing internet access, online money transfers and mail delivery services.
Our team has experience at every stage of the trademark process and can advise on the most appropriate route to take, whether filing a national application directly through the Cuban PTO or registering and defending trademarks in the Dominican Republic and all other jurisdictions in the Caribbean. Our experience in the coordination of pan-regional IP portfolios, and insightful, strategic advice make clients’ lives easier when navigating the individual laws and related idiosyncrasies of the 26 jurisdictions of the Caribbean. We are your “One-Stop-Shop” for IP Law throughout the Caribbean. For more information please contact us at firstname.lastname@example.org