Friday, April 7, 2017

Lawmakers Looking for a Review Of Havana Club Trademark Renewal

     A bipartisan group of Congress members asked the federal government Wednesday to review and explain the Office of Foreign Assets Control's decision to grant a Havana Club rum trademark to a company owned by the Cuban government.   In a letter to Secretary of the Treasury Steven Mnuchin and Secretary of State Rex Tillerson, a group of 25 lawmakers, led by Rep. Ileana Ros-Lehtinen, R-Fla., and Rep. Debbie Wasserman Schultz, D-Fla., asked for a review of the license granted to allow Cubaexport to renew an expired trademark registration for Havana Club rum in the United States.

     The lawmakers said the Cuban government confiscated the trademark without compensation from Jose Arechabala SA and the renewal should not have been granted by the Office of Foreign Assets Control because of a longstanding policy to protect intellectual property owners from piracy. Bacardi says it purchased the Havana Club name in 1994 from Arechabala.   The lawmakers asked for clarification as to why OFAC did not apply Section 211, a provision passed in 1988 that effectively denies legal protection to trademarks of properties seized by Fidel Castro's government, in the most recent application for renewal of Cubaexport's license.

     In a statement, Ros-Lehtinen said OFAC's decision to grant a license to Cubaexport "was an unprecedented decision with alarming implications for American intellectual property rights holders."  "It was a decision made for political expedience that ignored standing U.S. law and potentially opened a Pandora's box that could see U.S. intellectual property rights holders subject to unlawful and unjust foreign confiscations," Ros-Lehtinen said.

     Cubaexport had no trouble renewing the mark for decades, until Section 211 was wedged into a 1998 appropriations bill. That prompted a World Trade Organization case against the U.S. from the European Union on behalf of Pernod Ricard. Though the body ultimately faulted Section 211, there have been only minimal attempts by the U.S. to comply with the ruling.   In March 2011, the D.C. Circuit ruled that the U.S. government could refuse to allow Cubaexport to renew its trademark because of Section 211.

     Last year, Bacardi renewed the fight with a lawsuit arguing that the U.S. Patent and Trademark Office wrongly allowed Cubaexport to renew the registration.  Ros-Lehtinen and Wasserman-Schultz, who have both been skeptical of former President Obama's effort to normalize diplomatic and economic relations with Cuba, sent a similar letter last year, accusing the administration of ignoring Section 211.