August 2006
Mixing politics with trade marks
just as bad as mixing drinks
The dispute revolves around who owns the trade mark “Havana Club”/ Barcardi or Cubaexport, a Cuban company partnered with French company Pernod Ricard.
When Fidel Castro took power in 1959 Barcardi and Havana Club were both top rums in Cuba and both were nationalised. Soon after the Arechabala family, the owners of Havana Club, went to exile in Spain whilst Bacardi continued its operations abroad.
The Cuban Government then started making Havana Club and eventually registered the brand in the US after the Arechabala family let it lapse.
The Cubaexport/Pernod Ricard started exporting the rum around the world in 1993 whilst Barcardi launched its own campaign to launch the Havana Club brand in the US. Then in 1997, the situation got more confused, as Barcardi payed the Arechabalas family for the right to Havana Club.
The dispute has always been political with Barcardi enlisting the help of several senior US politicians including Florida Governor Jeb Bush to further its case for the right to the mark.
However, it became overtly so once the Cubaexile owned mark came up for renewal. The Patent office was told by the US State Department that renewing the Havana Club trade mark owned by the Cuban Government would be “inconsistent with US policy” after a provision formally know as Section 211, but more widely known as the “Bacardi Bill”, was inserted in a 1998 Budget Bill.
The US Patent and Trade mark office, then, promptly informed Cubaexport that the “Havana Club” trade mark would be “cancelled/expired” despite the fact that the renewal application was filed correctly, on time and with the appropriate fee.
The Barcardi Bill has been criticised as politicising the trade mark process and also as being a measure drafted for the sole advantage of one company.
The scene is now set for Cuba to return the favour by cancelling the registrations of US companies based on its own national policy.
Watch this space.
Briffa Comment:
The registration and protection of rights should be based solely on legal considerations. Once such decisions are based on political grounds, the system becomes flawed, companies and individuals loose faith in the system and the value of the rights decrease inexorably. The action the US has taken will have repercussions worldwide as countries with have any political animosity will begin using trade marks as a political tool. An unfortunate turn of events.