US-Cuba Trademark Protection Act introduced to Congress

A bipartisan group has introduced the US-Cuba Trademark Protection Act of 2003 (HR 2494) to the House of Representatives. The bill seeks to (i) help trademark owners protect trademarks registered in Cuba, and (ii) allow US courts to enforce trademark rights associated with Cuba.

Specifically, the bill calls for the repeal of Section 211 of the 1998 Omnibus Consolidated and Emergency Supplemental Appropriations Act, which prohibits US courts from enforcing or granting protection to a trademark that is "the same as or substantially similar to" a trademark used in connection with a business or assets confiscated by the Cuban government in the early 1960s, unless the original owner or "bona fide successor-in-interest has expressly consented".

Section 211 was enacted after lobbying by rum-maker Bacardi Company. Bacardi bought the rights to the trademark HAVANA CLUB in the United States from the exiled Arechebala family, who owned the distillery producing Havana Club rum until it was seized by the Cuban government. The Arechebalas, however, failed to renew their US registration in the 1970s. The state-run Cuban owner of the Havana Club rum distillery registered the HAVANA CLUB mark with the US Patent and Trademark Office (PTO) in 1976. It later assigned the registration to Havana Club Holding SA, a joint venture formed by French distiller Pernod Ricard and another Cuban state-run company to market HAVANA CLUB rum worldwide. Havana Club Holding challenged Bacardi's use of the mark in the United States. As the case progressed, Section 211 was implemented, thus immunizing Bacardi from being found guilty of trademark infringement (see Havana Club Holding SA v Galleon SA (103 F3d 116, 53 USPQ2d 1609 (2d Cir. 2000)).

The provision has drawn extensive criticism from Cuba, the European Union and other countries, who claim that it infringes their rights under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), which guarantees national and most-favoured-nation treatment for WTO members. Section 211 also undermines the United States' reputation as a global champion and protector of intellectual property rights and jeopardizes trademark protection for over 5,000 US trademarks registered in Cuba by more than 400 US companies.

However, the new bill addresses the preservation of trademark rights, stating:

"In order to preserve the rights of US nationals holding trademarks in Cuba, the United States must repeal Section 211 [...] and should take the necessary steps to promote the long-term protection of trademarks, trade names, and domain names held by US nationals in that country."

The legislation also requires the secretary of state to begin consultations with Cuba on the following issues:

• continued adherence to the Paris Convention for the Protection of Industrial Property, the General Inter-American Convention for Trademark and Commercial Protection, and the Madrid Agreement;
  
  
• implementation of the World Intellectual Property Organization's Joint Recommendation for the Protection of Well-known Marks; and
  
  
• adherence to the Uniform Domain Name Dispute Resolution Policy.

Furthermore, the bill directs the PTO to establish a registry of (i) trademarks owned by US nationals that have been registered in Cuba since January 1 1959, and (ii) US-owned marks that meet the requirements for well-known marks as of December 31 1958. More importantly, the bill (i) provides a favourable solution for the United States to comply with the TRIPs agreement, and (ii) reaffirms the United States as a leader in the field of intellectual property rights.

Russell W Binns Jr and Veronica Relea, Goodwin Procter LLP, New York