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Havana Club Trademark Dispute Case

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CHAPTER 1
INTRODUCTION

The “US Section 211 Appropriation Act case”, more commonly referred to as “United States-Cuba ‘Havana Club’ Trademark Dispute case” has been one of the more controversial and potentially divisive cases before the World Trade Organization (hereinafter referred to as: “WTO”) to date. The European Union (hereinafter referred to as: “EU”) filed a complaint against the United States alleging that a law which prohibited the registration and enforcement in the United States of a Cuban trademark, “Havana Club” rum, which was licensed to the French company, Pernod-Ricard, S.A. (hereinafter referred to as: “Pernod-Ricard”), was in violation of the WTO Agreement, which protected the intellectual property rights of WTO Members and …show more content…

Prior to the Cuban revolution in 1959, Havana Club was one of the largest selling rums in the world, with the United States being its major market. Havana Club was manufactured by Jose Arechabala, S.A. (hereinafter referred to as “JASA”). The company was owned and controlled by the Arechabala family. In 1960, Fidel Castro confiscated most large private holdings in Cuba for State use, including JASA. Neither JASA nor the Arechabala family received compensation for the assets the Cuban government …show more content…

Cubaexport, a State-owned enterprise, exported Havana Club rum, primarily to the communist countries in Eastern Europe and to the Soviet Union from 1972 to 1993. Cuba export had registered the "Havana Club" trademark with the United States Patent and Trademark Office ("PTO") in 1976 under Registration No. 1,031,631. In 1993, Cubaexport decided to seek a foreign partner for its Havana Club rum business. In this regard, Havana Rum and Liquors, S.A. ("HR&L"), was formed under the laws of Cuba. Consequently, HR&L entered into a joint-venture agreement with Pernod-Ricard. In November 1993, Pernod-Ricard and HR&L entered into an agreement, which formed Havana Club Holding, S.A. ("HCH"), a Luxemburg corporation, and Havana Club International, S.A. ("HCI"), a Cuban corporation. Cubaexport then assigned its U.S. trademarks to HR&L, which, in turn, assigned them to HCH on June 22, 1994. HCH renewed the U.S. registration for the "Havana Club" mark for a term of ten years in

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