The new law, signed into law by outgoing US President Joe Biden in early December, prevents US courts from recognizing trademarks that were “illegally seized” by the Cuban government without the consent of the original owners since 1959.
1959 was the year when Fidel Castro’s revolutionary forces overthrew Cuban dictator Fulgencio Batista and established a socialist state. During the revolution, American companies and citizens were expropriated, prompting the United States to respond with a permanent embargo against Cuba.
Now, the No Stolen Trademarks Honored in the US Act of 2023 brings a new twist to the long-running legal battle between spirits maker Bacardi and the Cuban government over the Havana Club trademark.
Previously, US courts had upheld Cuba’s ownership of the Havana Club brand. However, under the new law, Cuba’s state-owned enterprise Cubaxport and its French partner, beverage giant Pernod Ricard, will no longer be allowed to claim trademark rights to Havana Club in the US.
Cuban trademarks and international law
The Havana Club, which is Cuba’s leading exporter of alcoholic beverages, generates millions of dollars annually for the island. The signing of the law is a significant blow to Cuba’s rum industry, and reactions from Havana were swift and frank.
Cuban Foreign Minister Bruno Rodríguez Parrilla called the law “an aggressive measure against Cuba” in a post on X (formerly Twitter), adding that “in violation of international law, Cuban trademarks legally registered in the country Accused of “opening the door of theft”. ,
Johanna Tablada de la Torre, deputy director for US affairs at the Cuban Foreign Ministry, noted in her X Post that approximately 6,500 US trademarks are registered in Cuba, with more than 1,000 applications in process.
He emphasized that all of these US trademarks are “protected by the Cuban Industrial Property Office”, contrary to the US government’s stance under the No Stolen Trademarks Act, which he said was also known as the “Bacardi Act”. May go.
‘Bacardi Act’
The bill, introduced in Congress by a bipartisan group of lawmakers in March 2023, aims to resolve the Havana Club controversy and “prevent anyone from using U.S. authorities to profit from intellectual property stolen from the rightful owners.” House Committee Report on JudiciaryThis clearly supports Bacardi’s claims.
Bacardi, founded in Cuba in 1862 and now based in Bermuda, claims to have acquired the Havana Club trademark and recipe from descendants of the original founders. The company argues that Cubeexport and Pernod Ricard have no legitimate claim to the brand.
After President Biden signed the law, Bacardi expressed satisfaction in an emailed statement to DW, saying he was “pleased” about the law because it would “allow the Cuban government or third parties to release seized Cuban goods to the United States.” “Prevents you from making profits from the trademarks associated with the property.” Cuban Government.”
Bill co-author California Congressman Darrell Issa, a Republican, said a press release The legislation addresses a “historic injustice” and declares that “the bond between the American people and their intellectual property is sacred.”
In contrast, Pernod Ricard expressed disappointment. Comments on European Drinks Industry Magazine, beverage businessThe company said the law undermines its “long-standing rights to the Havana Club brand in the United States – a trademark that Pernod Ricard and its joint venture partner CubeExport have legitimately owned since 1976.”
Long legal battle over a name
The battle between Bacardi and Cubaxport over Havana Club has lasted for three decades. In the 1950s, Havana Club was Cuba’s second largest rum brand after Bacardi.
After the 1959 revolution, Cuba nationalized rum distilleries and the Arechabala family, owners of the Havana Club brand, fled to Spain. The Bacardi family also left the island but continued to produce rum at facilities in Puerto Rico and Mexico.
In 1973, the Arechabala family failed to renew the US trademark for Havana Club, allowing the Cuban government to register the brand in 1976. In 1993, Cubaexport partnered with Pernod Ricard to market Havana Club internationally – except in the US, where an embargo restricted sales.
A year later, the Arechabala family sold the Havana Club trademark and recipe to Bacardi, which began making its own version in Puerto Rico. Bacardi argues that the Arechabala family never gave up its rights, making the sale legitimate.
expired licensing rights
In 1999, Bacardi’s significant lobbying efforts led to passage of a US law called the “Bacardi Bill”, which made it illegal for Cuban-linked companies to renew expired US trademarks or register trademarks seized by the Cuban government without compensation. Made it.
Pernod Ricard and Cubeexport held the US rights to the Havana Club trademark until 2006, when these rights expired. The Bacardi Bill prevented the renewal, leading Pernod Ricard to sue Bacardi, claiming that selling rum under the name Havana Club in the US was misleading.
A court in Philadelphia ultimately ruled in Bacardi’s favor, allowing the company to market Puerto Rican rum under the Havana Club name. When the US Supreme Court declined to hear the case in 2012, the long-running dispute appeared to be resolved in Bacardi’s favor.
Some softening in US-Cuba relations
However, in January 2016, during President Barack Obama’s thawing of US-Cuba relations, the US Patent and Trademark Office unexpectedly restored the US trademark of Havana Club to the Cuban government.
Trademark rights are granted for a period of 10 years. With the next renewal due in 2026, Johanna Tablada de la Torre suspects that the new US law “is intended to block CubeExport’s renewal efforts and take away its rights.”
Since the law prevents renewal of CubeExport, Bacardi may seek to register the Havana Club trademark in the US. Currently, Bacardi sells its rum in the US under the label “The Real Havana Club”, which is marketed as Puerto Rican rum.
This article was originally written in German.
