Trade mark trolls in Cuba: will 'General Washington' come to the aid of US brands?

Does history repeat itself? Not as such, but it does throw the light of the past on the problems of the present.  This Kat well recalls the problems faced by international brands, returning to South Africa after years of boycotts 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.

In this guest post Jaime Ángeles (Angeles & Lugo Lovatón, Dominican Republic) gives an account of the problems faced by US brand owners in Cuba, following a decades-long embargo. Jaime is quite involved in this field, having contributed to last week's New York State Bar Association Online Market on the subject. This is what Jaime tells us:

Trademark trolls and trade mark hijacking in Cuba

The start of negotiations and eventual 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 trade marks, including some very famous ones. One of these is a Cuban citizen, Gustavo Alejandro Fuentes Ledo, who has appliedto register at least 65 well known US trade marks including CHASE and NFL; in most cases he has applied for logos or device trade marks.

Impact of the embargo 

While filing an opposition is the legal procedure that allows you to try to stop a published mark going on to the register, Cuba operates a first-to-file rule and many US trade marks were not  previously registered in Cuba due to the US embargo. While many trade mark owners have started litigation in the Cuba Trade Mark Office through opposition or cancellation procedures, the territoriality protection rule of trade marks may go against the US trade mark owners' legitimate interests. However, if the US trade mark can also be considered a copyright work or reproduces a commercial name, there is a good chance that the opposition or cancellation procedure will succeed.

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.

A little-known Convention 

'General Washington'

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 Facebook tell the truth? 

We have been searching on the internet for information on Gustavo Alejandro Fuentes Ledo. It seems he is a Cuban citizen who has lived abroad (Spain) is actually based in Tampa, Florida (USA), travelling frequently to Miami. He is behind the portal and publication website elpuenteflorida.com. These are a highly important facts, because Mr Fuentes is not a Cuban citizen who suddenly had a bright idea and created those trade marks in order to start up 65 new businesses in Cuba. It will be difficult for a Cuban trade mark applicant who lives in the United States and who travels around to avoid being found to be a bad faith trade mark applicant, being a person with previous knowledge of all those trade marks.

Mr Fuentes has incidentally invested more than 50,000 Euros in filing fees.

There are positive precedents in Latin America with the implementation of the 1929 Washington Convention. Colombia has the lead so far with international cases [Ann Taylor, Resolución 65875, Superintendencia de Industria y Comercio Colombia; Timberland Company v Stanton & Cia SA, Case 2002-3003-01], with one even being decided by the Andean Community Court of Justice [Nautica, Proceso No.26-IP-97. Tribunal de Justicia de la Comunidad Andina].

Apart from invoking the infringement of an earlier copyright work or of the commercial name of the real trade mark owner, the Cuban Trade Mark Office thus has other means of preventing the hijacking of US trade marks under the Inter-American Convention for Trade Mark and Commercial Protection -- but acceptance of evidence of previous knowledge and the implementation by Cuban authorities of the Washington Convention is crucial. 

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, taking into account the litigation of Cuban trade marks in the United States [Only accepted in TTAB proceedings: see "TTABlog Guest Comment: Marty Schwimmer on TTAB's "CUBITA" Summary Judgment Under The Pan American Convention"]. The actions before the Office were commenced late in 2014; we wait with interest and excitement to see how they will turn out.

This Kat is grateful to Jaime for enlightening him, both in relation to the problem and particularly in relation to the General Inter-American Convention for Trade Mark and Commercial Protection, with which he was hitherto unfamiliar.