CUBA: U.S. PATENT OFFICE CONFIRMS CUBAN-FRENCH FIRM'S RIGHTS TO HAVANA CLUB TRADEMARK.On Jan. 29, the Trademark Trial and Appeal Board The Trademark Trial and Appeal Board (or "TTAB") is a body within the United States Patent and Trademark Office (USPTO) responsible for hearing and deciding certain kinds of cases involving trademarks. (TTAB TTAB Trademark Trial and Appeal Board
TTAB Technical Training Acceptance Board ) of the US Patent and Trademark Office ruled in favor of a Cuban-French firm that sells rum in some 80 countries under the Havana Club This article is about a rum made in Cuba. For the rum of the same name made by Bacardi in Puerto Rico and sold in the United States only, see Havana Club (Bacardi).
Havana Club is a brand of rum, made in Santa Cruz del Norte, Cuba. trademark. The ruling undermines special-interest legislation favoring Bacardi-Martini Inc., which claims the Havana Club label as its own.
Havana Club Holdings is a joint venture between Cuban state-owned Havana Rum and Liquors and the French firm Pernod Ricard Pernod Ricard (Euronext: RI) is a French company producing alcoholic beverages. Their most famous product, Pernod Anise (40% alcoholic volume) and Ricard Pastis, are both pastis, and often referred to as simply Ricard or Pernod. . The original producer of Havana Club rum, Jose Arechabala, left Cuba after President Fidel Castro Noun 1. Fidel Castro - Cuban socialist leader who overthrew a dictator in 1959 and established a Marxist socialist state in Cuba (born in 1927)
Castro, Fidel Castro Ruz came to power. The Arechabala family never revived its business and abandoned the trademark in the US and other countries.
The Bacardi company, expropriated ex·pro·pri·ate
tr.v. ex·pro·pri·at·ed, ex·pro·pri·at·ing, ex·pro·pri·ates
1. To deprive of possession: expropriated the property owners who lived in the path of the new highway. in Cuba in 1960, moved its distillery operations to Puerto Rico Puerto Rico (pwār`tō rē`kō), island (2005 est. pop. 3,917,000), 3,508 sq mi (9,086 sq km), West Indies, c.1,000 mi (1,610 km) SE of Miami, Fla. under the name Bacardi Ltd., and its headquarters to the tax haven Tax Haven
A country that offers individuals and businesses little or no tax liability.
There are several countries in the Caribbean that are considered tax havens. of Bermuda. In North America North America, third largest continent (1990 est. pop. 365,000,000), c.9,400,000 sq mi (24,346,000 sq km), the northern of the two continents of the Western Hemisphere. , it operates through Miami-based Bacardi-Martini.
Bacardi paid the Arechabala family a reported US$1.5 million for rights to the trademark and began selling rum under the Havana Club label in the mid-1990s, though it suspended sales when Pernod Ricard took legal steps to block use of the trademark.
In effect, the TTAB ruling said the attempt to void Havana Club Holdings' registration of the trademark had no legal merit because the Cuban state-owned Cubaexport had duly registered it in Cuba and transferred registration to the US in 1976, three years after the Arechabala family allowed it to lapse. In 1993, Cubaexport and Pernod Ricard formed Havana Club Holdings, which renewed the trademark in 1996.
When Pernod Ricard took Bacardi to court over its use of the label, Bacardi lawyers argued that the 1996 Havana Holdings' renewal had been obtained fraudulently. In 1999, a US District Court judge in New York New York, state, United States
New York, Middle Atlantic state of the United States. It is bordered by Vermont, Massachusetts, Connecticut, and the Atlantic Ocean (E), New Jersey and Pennsylvania (S), Lakes Erie and Ontario and the Canadian province of agreed with them (see NotiCen, 1999-05-13). The ruling was later upheld on appeal and in the US Supreme Court.
The courts based their rulings largely on a 1998 law known as Section 211, which was intended to favor Bacardi interests (see NotiCen, 2000-10-29).
Section 211 is a brief provision inserted by Florida senators in the 1,000-page 1998 Omnibus Appropriations bill, which was passed without debate either in committee or on the floor of Congress.
Section 211 prohibits US courts from recognizing any "mark, trade name, or commercial name that is the same or substantially similar to a mark, trade name, or commercial name that was used in connection with a business or assets that were confiscated con·fis·cate
tr.v. con·fis·cat·ed, con·fis·cat·ing, con·fis·cates
1. To seize (private property) for the public treasury.
2. To seize by or as if by authority. See Synonyms at appropriate.
adj. unless the original owner of such a mark, trade name, or commercial name, or the bona fide [Latin, In good faith.] Honest; genuine; actual; authentic; acting without the intention of defrauding.
A bona fide purchaser is one who purchases property for a valuable consideration that is inducement for entering into a contract and without suspicion of being successor-in-interest has expressly consented."
WTO See World Trade Organization. rules for and against Bacardi
In 2001, a World Trade Organization (WTO) dispute-resolution panel, ruling on a complaint brought by the European Union European Union (EU), name given since the ratification (Nov., 1993) of the Treaty of European Union, or Maastricht Treaty, to the
European Community (EU) on behalf of Pernod Ricard, decided largely in favor of Bacardi.
The panel accepted the US view that Section 211 does not violate the WTO agreement on Trade-Related Intellectual Property Rights (TRIPS) and that TRIPS does not offer trademark protection.
The EU then appealed that part of the decision to the WTO Appellate Body, arguing that the panel's decision weakened trademark protection by encouraging states to selectively honor trademark rights.
In the final WTO ruling, issued January 2002, the Appellate Body reversed the dispute panel's finding. "WTO Members do have an obligation under the TRIPS Agreement to provide protection to trade names," said the ruling. The Appellate Body instructed the US to change Section 211 or face fines and trade sanctions (see NotiCen, 2002-01-24).
Bacardi lobbies Gov. Bush, Bush lobbies Patent Office
Patent Office regulations prohibit ex-parte efforts to sway a decision on behalf of one side in a dispute. Nevertheless, The Washington Post reported in October 2002 that the Florida Democratic Party The Florida Democratic Party (FDP) is the official organization for Democrats in the state of Florida. History
The Florida Democratic Party has historically dominated Florida's state and local politics. had secured documents showing that Florida Gov. Jeb Bush had intervened on behalf of Bacardi to block Pernod Ricard from securing rights to the label by taking the case to the TTAB. While Gov. Bush was in the process of helping Bacardi, the company donated large sums to the Florida Republican Party.
Bacardi president Jorge Rodriguez Marquez wrote Bush, "Someone needs to tell PTO PTO
1. Parent Teacher Organization
2. or p.t.o. please turn over
3. power takeoff
PTO or pto please turn over
Noun 1. [Patent Office] to stop interfering." Gov. Bush then asked Patent Office director James Rogan to have the TTAB make a quick ruling in favor of Bacardi.
"I am writing on behalf of Florida-based Bacardi-Martini, USA, Inc. to ask that the Patent and Trademark Office take quick, decisive action on a pending application," Bush wrote. He added that "the outdated registration belongs to a company owned by Fidel Castro called CubaExport and should be canceled immediately." Rogan is a political appointee APPOINTEE. A person who is appointed or selected for a particular purpose; as the appointee under a power, is the person who is to receive the benefit of the trust or power. of President George W. Bush.
Emails from Gov. Bush's office showed that he and his staff had correspondence and secret meetings with other Patent Office officials, and Rodriguez Marquez has acknowledged that he met with State Department officials, Vice President Dick Cheney's office, and White House political advisor Karl Rove concerning the case.
The Post also reported in December 2002 that Rodriguez Marquez belatedly filed a required federal report on his personal lobbying. By law, CEOs must report their lobbying efforts if they spend 20% or more of their time doing it. Rodriguez Marquez reported that he had spent US$500,000 in lobbying since 1998. In addition, Bacardi spent US$2.2 million more hiring lobbyists
The governor's spokeswoman, Elizabeth Hirst, denied Bacardi's campaign contributions had anything to do with the case and explained that Bush was working in his official capacity to represent a constituent, "a company that is based in Florida, which employs a significant number of people and generates revenue to our economy."
It depends on what "confiscation confiscation
In law, the act of seizing property without compensation and submitting it to the public treasury. Illegal items such as narcotics or firearms, or profits from the sale of illegal items, may be confiscated by the police. Additionally, government action (e.g. " means
Section 211 hinges on Cuba's confiscation of Havana Club assets. But the various rulings in the case were mostly based on narrow aspects of the controversy and do not seriously inquire whether the trademark was ever confiscated.
Pernod Ricard maintains that the Havana Club trademark was not confiscated but was simply allowed to expire by the Arechabala family. In his book Bacardi: The Hidden War, Hernando Calvo Ospina writes that in 1995, four years before the Castro government came to power, the Arechabala family began allowing its trademark to lapse as the business faced financial and other setbacks. The argument is that the government intervened to assume control of a nonfunctioning company.
However, in a detailed analysis of the legal debate, Stephen J. Kimmerling suggested a case could be made that the Arechabala family never abandoned its claims to the trademark. Kimmerling writes, "Because the Cuban government forcibly expropriated the Arechabalas' business (including the trademark), the family did not voluntarily cease using the Havana Club mark." Furthermore, "one could argue that...subsequent lack of capital to resume business would excuse the mark's nonuse."
Congress has yet to act on the WTO's conclusion that the US must change Section 211. US businesses pointed out that the law was an open invitation for Cuba or any other country to ignore foreign registered US trademarks. Castro has announced that Cuba would sell rum under the Bacardi label and sell Cuban-made AIDS medicines patented by US companies (see NotiCen, 2001-04-19).
Bill would invalidate Section 211
A bipartisan bill (US-Cuba Trademark Protection Act of 2003) to invalidate Section 211, now before Congress, has the support of 670 businesses organized under the coalition USA Engage.
The bill would force the administration to initiate talks with Cuba to ensure that both countries adhere to trademark-protection agreements. The bill would also expressly direct the courts to enforce trademark rights and disregard Section 211.
"Cuba and the US have honored each others' trademarks for 75 years," said Rep. Charles Rangel (D-NY), one of the bill's sponsors. "It's shameful to think that the US Congress might throw this area of cooperation away by pandering to one special interest at the expense of hundreds of American trademark holders. Our legislation has gained support so quickly because it ensures that, as the US honors Cuban trademarks, Cuba will honor ours."
Because of the trade embargo, repeal of Section 211 would not mean Havana Club Holdings could sell its rum in the US. However, it would prevent anyone else from selling under that label. [Sources: Havana Club: A Case Summary and an Analysis of Selected Legal Issues, by Stephen J. Kimmerling, Association for the Study of the Cuban Economy (ASCE ASCE
American Society of Civil Engineers ), proceedings, 8/12-14/1999; Agence France-Presse, 07/06/01; World Trade Organization, ruling T/DS176/R, 08/06/01; The Washington Post, 09/14/02, 10/18/02, 12/04/02; St. Petersburg Times
The St. Petersburg Times is a daily newspaper based in St. Petersburg, Florida, that serves the larger Tampa Bay area. , 01/08/03; Miami Daily Business Review, 03/19/03; The Guardian (London), 05/07/03; Broward Daily Business Review (Florida), 10/01/03; PRNewswire, 09/26/00, 10/24/03, 02/02/04; Granma (Cuba), 02/03/04; Notimex, 02/04/04; World Data Service (WDS Wds Words
WDS Wireless Distribution System (Joint Common Database)
WDS Wide-area Data Services
WDS Wireless Domain Services (Cisco Systems technology)
WDS Wavelength Dispersive Spectroscopy ), 02/05/04; Spanish News Service EFE EfE Environment for Europe (EU)
EFE Einstein Field Equations (general relativity)
EFE Early Fuel Evaporation (Automotive Emission Control)
EFE Endocardial Fibroelastosis , 02/17/04; Hernando Calvo Ospina, Bacardi: The Hidden War, 2004]