International IP Law: Securing Your IP Rights in Cuba and French Polynesia

CUBA

Six months have passed since President Obama and Cuban President Raul Castro made the historic decision to reestablish diplomatic relations between the U.S. and Cuba. Although Congress has not yet voted to lift the U.S. embargo of Cuba, restrictions on foreign trade are being relaxed and many companies are developing a strategy for entering the Cuban market in the near future. This strategy includes taking the preemptive step of protecting their intellectual property before entering the Cuban market.

Since 1995, U.S. companies have been allowed to file and prosecute trademark applications, conduct opposition or infringement proceedings, and hire attorneys in Cuba. Because the embargo prohibited companies from selling U.S. products in Cuba, however, they had no incentive to invest time and money to protect their trademarks there. This will all change as Cuba continues to open up to foreign trade, particularly after the embargo is lifted. U.S. companies now have a strong incentive to begin shoring up their intellectual property rights.

Like other Latin American countries, Cuba is a “first-to-file” country for trademark protection, which means the first party to file a trademark application is considered the legal owner of the trademark, even if that party has never used the mark and has no intention of using the mark. This has resulted in the common practice of “trademark squatting,” where individuals file applications to register well-known trademarks for the sole purpose of later selling them to, or negotiating a lucrative license or distribution agreement with, the rightful trademark owner.

In light of the newly established relations between the U.S. and Cuba, and to minimize the risk of time-consuming and costly conflicts with trademark squatters, U.S. brand owners should consider protecting their trademark rights before they enter the Cuban market.

FRENCH POLYNESIA

French Polynesia (including Tahiti) has adopted its own laws relating to intellectual property. Formerly, any intellectual property rights valid in France, including patents, trademarks and designs, were automatically extended to French Polynesia. Any French rights based on applications filed before March 3, 2004 continue to be automatically extended to French Polynesia. However, if your French rights are based on an application filed from March 3, 2004 through January 31, 2014 (May 6, 2013 for community design applications), you need to file an extension of protection to French Polynesia if you wish to maintain rights in French Polynesia. The deadline for filing a request for such an extension is September 1, 2015.

As of February 1, 2014, rights in French Polynesia are obtained by requesting extension of rights to French Polynesia when an application is directly filed in France or filed through a regional intellectual property office covering France (i.e. European patents, community trademarks and community designs).