The restoration of diplomatic relations between the US and Cuba, and the lifting of international sanctions on Iran, will bring new opportunities – and also new risks – for US companies.
Even before the full normalization of relations, US companies already have mechanisms to protect their intellectual property rights in these countries. However, many US trademark owners may not have bothered to do so, given the difficulties in enforcing rights that were theoretically “protected.”
According to CNBC, Cuba has 11 million consumers with little or no exposure to new US products during the past 50 years.
However, Cubans are already familiar with “vintage” US products that were imported in the early 1960s and earlier – such as the Ford cars that are still carefully maintained and in use.
Cuba is a signatory to the Madrid Protocol and the Madrid Agreement. It has a “first-to-file” system for trademarks. Thus, US trademark owners may want to file their marks in Cuba promptly, before a local entity “squats” on the marks – perhaps in hopes of obtaining a hefty sum to release it.
Cuba does prohibit the registration of a “notorious” (famous or well-known) mark belonging to a third party – such as a US trademark owner. Proving that a US mark is “notorious” in Cuba may prove difficult, however.
If the owner of a registered trademark in Cuba fails to use it for three years, a third party (such as the owner of the US mark) may petition for the previous registration to be cancelled.
Iran has a population of about 77 million. Like the US and Cuba, Iran is a signatory to the Madrid Agreement and Madrid Protocol.
Under Iranian law, a company with a US trademark may register that mark in Iran. Registration takes about six months and is valid for an initial 10 years with 10-year renewal periods.
In Iran, a trademark may be used in commerce even if it’s not registered. However, the owner of an unregistered mark may not bring an action for infringement. Both civil and criminal trademark infringement actions are provided for.
Now is a good time for US trademark owners to think more seriously about protecting their IP rights in these emerging markets.