New US legislation ends decadeslong Havana Club trademark battle – DW – 12/19/2024 | EUROtoday

New laws, signed into legislation by outgoing US President Joe Biden in early December, prohibits US courts from recognizing emblems that have been “illegally confiscated” by the Cuban authorities since 1959 with out the unique house owners’ consent.

1959 was the yr Fidel Castro’s revolutionary forces overthrew Cuban dictator Fulgencio Batista and established a socialist state. During the revolution, US firms and residents have been expropriated, prompting the United States to reply with a long-lasting embargo in opposition to Cuba.

Now, the No Stolen Trademarks Honored in America Act of 2023 introduces a brand new twist to the long-standing authorized battle between spirits producer Bacardi and the Cuban authorities over the Havana Club trademark.

Previously, US courts had upheld Cuban possession of the Havana Club model. However, below the brand new laws, Cuba’s state-owned enterprise Cubaexport and its French companion, beverage large Pernod Ricard, would not be permitted to say trademark rights to Havana Club within the US.

Cuban emblems and worldwide legislation

Havana Club, the main Cuban export in alcoholic drinks, generates tens of millions of {dollars} yearly for the island. The signing of the legislation is a major blow to Cuba’s rum trade, and reactions from Havana have been swift and pointed.

Cuban Foreign Minister Bruno Rodriguez Parrilla known as the laws “an aggressive measure against Cuba” in a put up on X (previously Twitter), accusing it of “opening the door to the theft of Cuban trademarks legally registered in the country, in violation of international law.”

Johana Tablada de la Torre, deputy director for US affairs on the Cuban Ministry of Foreign Affairs, famous in her personal X put up that just about 6,500 US emblems are registered in Cuba, with over 1,000 extra within the utility course of.

She emphasised that every one these US emblems are “protected by Cuba’s Industrial Property Office,” contrasting this with the US authorities’s stance below the No Stolen Trademarks Act, which she mentioned might simply as effectively be known as the “Bacardi Act.”

The ‘Bacardi Act’

The invoice, launched in Congress in March 2023 by a bipartisan group of lawmakers, goals to resolve the Havana Club controversy and “prevent anyone from using US authorities to profit from intellectual property stolen from rightful owners,” based on a report by the House Committee on the Judiciary. It explicitly helps Bacardi’s claims.

Bacardi, based in Cuba in 1862 and now based mostly in Bermuda, asserts it acquired the Havana Club trademark and recipe from the descendants of the unique founders. The firm argues that Cubaexport and Pernod Ricard don’t have any professional declare to the model.

After President Biden signed the legislation, Bacardi expressed satisfaction in an emailed assertion to DW, saying it’s “pleased” concerning the laws as it might “prevent the Cuban government or third parties from profiting in the United States from trademarks linked to assets confiscated by the Cuban government.”

California Congressman Darrell Issa, a Republican who co-authored the invoice, mentioned in a press launch that the legislation addresses a “historic injustice” and declared that “the bond between the American people and their intellectual property is sacred.”

In distinction, Pernod Ricard voiced disappointment in feedback to the European beverage trade journal, The Drinks Business. The firm mentioned the legislation undermines its “longstanding rights to the Havana Club brand in the United States — a trademark that Pernod Ricard and its joint venture partner Cubaexport have legitimately owned since 1976.”

An extended authorized battle over a reputation

The battle over Havana Club between Bacardi and Cubaexport has spanned three many years. In the Fifties, Havana Club was Cuba’s second-largest rum model after Bacardi.

Following the 1959 revolution, Cuba nationalized rum distilleries, and the Havana Club model house owners, the Arechabala household, fled to Spain. The Bacardi household additionally left the island however continued producing rum at amenities in Puerto Rico and Mexico.

In 1973, the Arechabala household did not renew the US trademark for Havana Club, permitting the Cuban authorities to register the model in 1976. In 1993, Cubaexport partnered with Pernod Ricard to market Havana Club internationally — besides within the US, the place an embargo prohibited gross sales.

One yr later, the Arechabala household offered the Havana Club trademark and recipe to Bacardi, which started producing its personal model in Puerto Rico. Bacardi argues that the Arechabala household had by no means relinquished their rights, making the sale professional.

Expired licensing rights and Puerto Rico

In 1999, vital lobbying efforts by Bacardi secured the passage of a US legislation dubbed the “Bacardi Bill” that made it unlawful for Cuban-linked firms to resume expired US emblems or register emblems confiscated by the Cuban authorities with out compensation.

Pernod Ricard and Cubaexport held US rights to the Havana Club trademark till 2006, when these rights expired. The Bacardi Bill prevented renewal, prompting Pernod Ricard to sue Bacardi, claiming that promoting rum below the Havana Club identify within the US was deceptive.

A Philadelphia court docket ultimately dominated in favor of Bacardi, permitting the corporate to market Puerto Rican rum below the Havana Club identify. When the US Supreme Court declined to listen to the case in 2012, the long-running dispute appeared resolved in Bacardi’s favor.

A brief-lived thaw in US-Cuba relations

However, in January 2016, throughout President Barack Obama’s thaw in US-Cuba relations, the US Patent and Trademark Office unexpectedly restored Havana Club’s US trademark to the Cuban authorities.

Trademark rights are granted for 10-year durations. With the subsequent renewal due in 2026, Johana Tablada de la Torre suspects the brand new US legislation “aims to block Cubaexport’s renewal efforts and strip it of its rights.”

Since the legislation prevents Cubaexport’s renewal, Bacardi might search to register the Havana Club trademark within the US. Currently, Bacardi sells its rum within the US below the label “The Real Havana Club,” marketed as Puerto Rican rum.

This article was initially written in German.