By Jaime Hamre
CAMAGUEY, Cuba, Nov 25 (Reuters) - When Julio Manzinidecided two years ago to name his small restaurant McDonald'safter the famous fast-food chain, he had no idea itcould cause any trouble. He has since been frightened intoremoving the name.
"I don't even know what McDonald's tastes like, I justthought the name was striking, like Shakira or something," hesaid at the lunch counter of what used to be "Cafeteria LaMcDonald's Camagueyana" in the Cuban city of Camaguey, about 300miles (500 km) east of Havana.
This month, Manzini stripped "McDonald's" and the famousgolden arches from his handcrafted sign as a precaution after heclaimed his establishment was visited by a lawyer sent by thecompany.
The place is now simply called "Cafeteria La Camagueyana."
His counterfeit McDonald's illustrates a potentialbattlefront between Cuba and the United States over trademarkand intellectual property rights as Cuba's economy opens up tomore private enterprise and closer ties with the United States.
The two countries restored diplomatic relations this yearafter half a century of Cold War hostility and are now workingto improve ties. Trademark and intellectual property issues willbe on the negotiating table, both sides have said.
Both have grievances. The United States has denied Cubancompanies the same trademark protection enjoyed by brands fromeverywhere else, forcing marquee names such as Havana Club rumand Cohiba cigars into long, expensive court battles.
And while Cuba protects trademarks registered with thegovernment, it also tolerates or officially sanctions the resaleof unlicensed music, software and entertainment. Statetelevision routinely pirates American movies and shows forbroadcast.
In a socialist economy that only in recent years has allowedsmall-scale private businesses, knowledge of trademark law ispoor. Manzini said he never thought to check with the CubanOffice of Industrial Property (OCPI) to see if the McDonald'sname was available. It is not: McDonald's has registeredtrademarks in Cuba since at least 1985.
Despite the United States' 53-year-old trade embargo againstCuba, companies from both countries have continued registeringtrademarks and patents in the other.
Since 1966 about 1,500 U.S. businesses have filed nearly6,000 trademarks in Cuba, including renewals, according to datafrom Saegis, the online trademark database from Thomson Reuters.
Among them are Coca-Cola, Pepsi, Levi's, Nike, Starbucks Coffee, Pfizer, Intel, Burger King, KFC and Goodyear.
Another 1,355 trademarks of U.S. origin, including Walmart and Google, are protected under aninternational treaty known as the Madrid Protocol, according toWorld Intellectual Property Organization data.
Aside from the "special hamburgers" and "American coffee" onoffer, there is little that separates Manzini's hole-in-the-walloperation from hundreds of other snack bars tucked in doorwaysacross the island.
But he was likely violating trademark protections by usingthe McDonald's name and the golden arches on his sign. He saidhe only fully understood he could be in trouble after the lawyervisited the restaurant recently while he was away.
"I'm really afraid. I don't even pull in 1,000 pesos ($40) aday," Manzini said.
McDonald's would have to complain to the OCPI to legallystop Manzini and others, such as the "McDunald" cafe in the cityof Santa Clara, which also uses the golden arches on its sign.
A spokeswoman for McDonald's declined to comment except tosay that "we are committed to vigorously protecting ourintellectual property."
EXPLOSION OF INTEREST
More companies have registered their brands in Cuba sinceU.S. President Barack Obama and Cuban President Raul Castroannounced detente last December, among them Twitter,Uber and Segway.
"There has been an explosion of interest from U.S.companies," said Jaime Angeles, an intellectual property lawyerand partner at Dominican law firm Angeles & Lugo Lovaton whorepresents firms fighting for their trademark rights in Cuba.
Some 192 U.S. trademarks were filed in Cuba in the firstfour months of 2015, compared to 78 in all of 2014, according toSaegis data.
A few U.S. companies have seen their brand names pursued byothers in Cuba.
Gustavo Fuentes, a Cuban lawyer residing in the UnitedStates, has applied for 65 trademarks, including famous brandssuch as John Deere, Chase, the NFL and Pixar.
Some companies are contesting those rights, includingJetBlue Airways Corp, which announced plans for a NewYork-to-Havana charter five months after Fuentes asked for thename JetBlue.
"We will vigorously protect our brand in Cuba," spokesmanDoug McGraw said.
Fuentes declined to comment. The OCPI has yet to grant himany trademarks, according to its public records.
Angeles, who represents eight of the U.S. companies,including restaurant chain IHOP and pharmaceuticalcompany Hospira, said he was confident they would win the rightsto their brands in Cuba.
"The Cuban system has all the legal tools to protecttrademarks of any country," he said, adding that companiesshould claim their trademarks before someone else does. "Filingfirst is the cheapest protection you can get."
Cuba has long struggled to protect its marquee brands underU.S. law, including one statute that aims to protect owners ofCuban companies nationalized after the 1959 revolution thatbrought Fidel Castro to power.
Bacardi, the former Cuban distiller that now makes rum inPuerto Rico, controls Havana Club in the United States after acquiring the name from its original pre-revolutionary owner.Everywhere else, Cuba and its French joint venture partner,Pernod Ricard, control the rights to Havana Club.
"That is a restriction we put on trademarks only withrespect to Cuba," said Jeremy Sheff, a law professor at St.John's University in New York. "The U.S. treatment of Cuba isunique in all of international property law."
Cuba's famed Cohiba cigar brand has been fighting for itstrademark for 19 years against a rival that won a major U.S.court case by citing the embargo. (Reporting by Jaime Hamre; Additional reporting and Writing byDaniel Trotta; Editing by Kieran Murray)
