Cubaexport, partner of Pernod, was barred from renewing its US registration for HAVANA CLUB under a 1998 law making trademarks confiscated by the Cuban government unenforceable.

Coverage here.

Decision DC COA Havana Club(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “http://www.scribd.com/javascripts/embed_code/inject.js”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

St. Petersburg Times discussion of dispute between Pernod (distributor of HAVANA CLUB outside the U.S.)  and Matusalem, over its use of SPIRIT OF CUBA for rum.

I blogged previously on the Southern District Court of New York decision in the COHIBA cse, wherein the Court held that the Cuban plaintiff had protectable trademark rights in the COHIBA mark in the U.S. after it showed evidence that its reputation here met the standard under Article 6bis of the Paris Convention for protection as a famous mark.

The Second Circuit has now reversed the District Court holding in Empresa Cubana v. Culbro, 04-2527 (2d Cir Feb 25 2005).  It does not reach the issue as to whether plaintiff’s mark is famous in the U.S. but instead holds that plaintiff, as a Cuban entity, cannot obtain property, that is to say protectable U.S. trademark rights, under the embargo against Cuba.  Thus the claims are dismissed.

This case may be correct on the law but raises concerns.

First, assuming that the lower court’s factual holding that COHIBA is a famous mark in the U.S. is correct, the outcome appears to serve neither the purpose of the embargo nor of the Lanham Act. 

Plaintiff was not seeking the right to use the COHIBA mark in the U.S., only to prevent defendant from using it.  Such an injunction would not bolster the Cuban economy in any meaningful way.  In the meanwhile, the U.S. consumer, presumably aware of the famous Cuban COHIBA mark, will be exposed to defendant’s COHIBA product (that had been marketed at times using Cuban imagery).

Second, there is the issue of equal treatment.  U.S. trademark owners have received the protection of foreign courts not only in the ‘reputation without use’ scenario (see my previous post) but even when external political forces may have prevented the trademark owner from satisfying local conditions otherwise necessary for protection under law.  For example McDonalds was able to protect its mark in South Africa against an interloper during McDonald’s non-use during the apartheid sanction period. 

Then there is the issue of retaliation.  Cuba has certainly appropriated the assets of Cuban businesses, which appropriations led to trademark conflict outside Cuba (such as the HAVANA CLUB matter).  However with regard to Cuban protection of U.S. famous marks, on paper at least, Cuba now offers greater protection to U.S. marks than the other way around.  Cuba is an adherent to the Paris Convention and, in theory, would grant 6bis protection to U.S. famous trademark holders (I would be interested from hearing from anyone who has instructed a 6bis action in Cuba – I came close once but the client changed its mind ). Furthermore, U.S. entities may obtain Cuban trademark protection despite the embargo (although not all owners of famous marks do so). 

Some day Castro will fall off the world’s stage.  We may at that time normalize trade relations with Cuba.  From a policy perspective, the U.S. would perhaps be better off until then if there was a no-use truce of the other country’s marks.  I think we lose out if there’s a free-for-all until then.

Political rival charges Congressman DeLay of accepting $20,000 from Bacardi in exchange for influencing legilsation that aided Bacardi in its trademark fight regarding the HAVANA CLUB mark.  Via Houston Chronicle.

A previous instance of allegations that Bacardi contributed to politicians (in that case, $50,000 to Jeb Bush) to affect trademark matters, here.

Bacardi has been dealt a setback in its quest to secure the HAVANA CLUB trademark.  This, despite the assistance of Jeb Bush’s ex parte contacts with the Trademark Office.  Story here via HillNews.com, background here and lots of background here.

There is a long and tortuous history concerning the trademark for HAVANA CLUB rum.  There was a pre-Castro HAVANA CLUB rum and there is a present day Cuban HAVANA CLUB rum.

Bacardi (successor in interest to the pre-Castro rum) was influential in getting the U.S. to adopt legislation to ban importation of the Cuban version, which legislation was held by the WTO to be a violation of U.S. treaty obligations (background here and here).  Bacardi has litigated (up to the Supreme Court) for the right to sell its own Bahamanian-produced HAVANA CLUB.  There is an awful lot of material on the Web on this dispute –some more stuff here and a metasearch of the term HAVANA CLUB might be informative as well.

The U.S. PTO is handling proceedings regarding the disposition of the trademark applications and registrations of the respective parties (an extensive essay about the distinction between the right to use a trademark and the right to use register a trademark, the descretion of a federal court to decide these issues separately, and the complex role of the PTO as an expert agency to federal courts on these issues would be relevant here but beyond the scope of this blurb). 

 In September it was revealed that in June of this year, Bacardi had contributed $50,000 to Florida Governor Jeb Bush’s re-election campaign and that two weeks later he wrote a letter to the PTO Commissioner about the case.  Bush denied a link.

Under pressure, Gov. Bush has now provided details about his contacts with the PTO, which suggests that his communications may be characterized as petitions regardin the handling of a specific case.  The funniest line in the Post article quoted a Bacardi official as complaining that the Trademark Office was interfering in a trademark case. 

A starting point for evaluating Gov. Bush’s actions would be 37 CFR 10.14 regarding who may represent a party in a proceeding.  As a non-lawyer, Bush does not seem to fall under the enumerated list of indivduals.  Furthermore, given that 37 CFR 10.93(b), which governs ex parte communications with the Commissioner during an inter partes proceeding, refers only to “practitioners” as being allowed to make such contacts, Bacardi may have problems there as well.  We don’t know all the facts so we shouldn’t jump to any conclusions here.

Of course, when the President’s brother writes an angry letter to a presidential appointee, we can come to certain conclusions.

Given the importance of the Florida gubernatorial campagin, I don’t think we have heard the last of this matter. 

 However as we see time and time again, one thing is clear, parties who seek expert trademark representation without political fall-out should retain me.