Cuba Trademark fights are popping up and lawyers in the United States are already sounding alarm bells over IP rights.
One example of an ongoing trademark battle revolves around rum, what else?
The high-profile dispute is between Bermuda-based Bacardi and the Cuban government over the “Havana Club” trademark. The case has IP lawyers watching closely.
Bacardi is one of Latin America’s most famous spirits producers. The company has formally asked the United States to revoke a license that was granted to the Cuban government to sell “Havana Club” rum in the United States.
This could have major headaches for Bermuda-based Bacardi, the company that currently sells “Havana Club” in the United States. It could also set precedent for future trademark fights when and if the embargo is lifted.
Therefore other companies might want to pay attention, lawyers say.
The Bacardi Cuba trademark battle
In the case of Bacardi, the U.S. Patent and Trademark Office issued a permit giving Cuba the rights to the Havana Club name. The permit will allow Cuba to sell the famed rum in the United States once the commercial embargo between both countries is lifted.
The Cuban government confiscated the José Arechabala Company, the producer of Havana Club, in 1960. Bacardi insists that it bought the brand’s rights from its rightful owners, the Arechabala family.
Bacardi claims it is the sole proprietor of the Havana Club trademark in the United States. And it has requested that the U.S. Treasury revoke the license, as it clashes with previous rulings of the Office of Foreign Assets Control (OFAC)
Bacardi also claims the permit goes against the U.S. government’s practice of not acknowledging confiscated trademarks or firms.
“None of the recently announced policy changes toward Cuba remotely suggest that the United States should set aside well-established law and ignore the Congressional mandate of Section 211 to protect the rights of confiscated property owners and their successors,” Bacardi said in a statement.
Why Cuba trademarks are important
Cuba Trademarks under other Intellectual Property will be a major battleground when, and if, a Cuba embargo is lifted. According to lawyers at Pillsbury Winthrop Shaw Pitman, a major U.S. law firm, IP protection is an absolute must.
“It will make sense for many companies to consider strategic first steps in Cuba, including for intellectual property protection,” Pillsbury Partners William Atkins and Richard Kirkpatrick wrote. “When change comes, chance favors the prepared.”
The Pillsbury lawyers write that protecting intellectual property now puts in a company in a position to conduct business whenever the market opens and serves as a defense against pirates looking to cash in on a brand.
It also protects companies from the situation that has befallen Bacardi.
“First, under current Cuban law, certain U.S. persons and entities are allowed to file a trademark application in Cuba, even when one is not using the trademark in Cuba,” the lawyers wrote.
“Being first to file under Cuba’s regime will help preempt opportunists who may seek to file a trademark application for your own trademark,” they wrote.
The lawyers say that Cuban trademark application process is protracted, taking months or years, and will only slow as the system floods with new applications in the expectation Cuba will soon become an eagerly sought market.
Finally, the adversarial process of eradicating pirated marks will be protracted,” according to Pillsbury.
Stay thirsty my friends.