This website uses cookies so that we can provide you with the best user experience possible. Cookie information is stored in your browser and performs functions such as recognising you when you return to our website and helping our team to understand which sections of the website you find most interesting and useful.
News
US lawmakers question Havana Club trademark renewal
A bipartisan group of Congress members has asked the US Government to review the decision to renew Cubaexport’s Havana Club rum trademark, saying the move has “potentially opened a Pandora’s box”.
Congress members have asked the US Government to review the decision to renew Cubaexport’s Havana Club rum trademark
According to a report by Law360, a group of 25 lawmakers – led by Republican Ileana Ros-Lehtinen, who represents Florida’s 27th Congressional District, and Democrat Debbie Wasserman Schultz, who represents Florida’s 23rd District – asked for a review of the license granted by the Office of Foreign Assets Control (OFAC) to Cubaexport, the Cuban entity that owns the trademark for Pernod Ricard’s Havana Club rum, in January 2016.
Havana Club’s trademark is at the centre of an ongoing dispute between Bacardi, which claims it holds the rights to the US trademark, and Pernod Ricard, which distributes the rum in 124 countries through a joint venture with Cuban state-owned company Havana Club Holdings.
In a letter to Secretary of the Treasury, Steven Mnuchin, and Secretary of State, Rex Tillerson, the lawmakers said the Cuban government confiscated the trademark without compensation from Jose Arechabala SA, the family-owned business that launched the brand.
On these grounds, the renewal should not have been granted, because of a longstanding policy to protect intellectual property owners from piracy.
In a statement, Ros-Lehtinen reportedly said granting the license “was an unprecedented decision with alarming implications for American intellectual property rights holders.”
She continued: “It was a decision made for political expedience that ignored standing US law and potentially opened a Pandora’s box that could see US intellectual property rights holders subject to unlawful and unjust foreign confiscations.”
In March 2011, the DC Circuit ruled that the US government could refuse to allow Cubaexport to renew its trademark because of Section 211, which denies legal protection to trademarks of properties seized by Fidel Castro’s government. In the letter, the lawmakers have asked for clarification as to why the OFAC did not apply Section 211 to the application last year.
In March 2016, Bacardi asked a US district court to “strike” the Havana Club trademark from the official register, alleging that Havana Club Holding had engaged in “elaborate, misleading, fraudulent and deceptive activities” when “obtaining, maintenance and renewal of the Havana Club trademark in the US.”
Bacardi says it purchased the Havana Club name in 1994 from Arechabala. However, Arechabala had seen the US mark expire in 1973 – three years before Cubaexport applied to register its own trademark.