In a historic move, President Joe Biden has signed into law the No Stolen Trademarks Honored in America Act, effectively blocking U.S. courts and agencies from recognizing or validating trademarks that were seized by the Cuban government following the Cuban Revolution. The new legislation secures Bacardi’s longstanding rights to the popular “Havana Club” rum brand in the United States, bringing closure to a legal battle that has spanned decades.
The signing of this bill on Sunday was confirmed in a press release from the White House on Monday. Under the new law, U.S. agencies and courts will no longer enforce trademarks that Cuba expropriated after Fidel Castro’s revolution in 1959, ensuring that intellectual property seized by the Cuban government will not be granted legitimacy or recognition in the U.S.
The legislation, which was years in the making, was primarily driven by the long-standing dispute between Bacardi, the world’s largest privately held spirits company, and Cuba’s state-owned Cubaexport. Bacardi, which was forced to leave Cuba after the 1959 revolution, claims that the Cuban government unlawfully confiscated the “Havana Club” brand name and related assets from the Arechabala family company in 1960. Bacardi later acquired the assets and relaunched the brand in the United States in 1995.
In a move to protect its rights, Bacardi filed multiple lawsuits, including a notable 2004 legal action, after the U.S. Patent and Trademark Office refused to cancel the trademark registered by Cubaexport for the same name in 1976. While Bacardi’s legal team has fought hard for decades, Cubaexport, with the support of French spirits conglomerate Pernod Ricard, sought to assert its ownership of the trademark in the U.S. as well.
This law effectively resolves the Havana Club trademark controversy by closing the door to Cuban government attempts to regain control over the brand in U.S. markets. The bill’s sponsors emphasized that the law is intended to prevent the use of U.S. agencies to legitimize intellectual property that was forcibly taken by the Cuban government.
The new law has already sparked a strong reaction from Cuba. Bruno Rodriguez Parrilla, Cuba’s foreign minister, condemned the bill as an “aggression against Cuba” and accused the U.S. of violating international law. He took to social media, labeling the law as a means to “steal” Cuban trademarks that were “legitimately registered” within the country.
However, U.S. lawmakers argued that the legislation is an important step toward ensuring the protection of intellectual property rights and preventing companies from benefiting from assets seized by foreign governments in contravention of international norms. A report from the Congressional committee noted that the bill was designed not only to resolve the Havana Club trademark dispute but to uphold the integrity of U.S. intellectual property law.
Although the new law does not name Bacardi or Pernod Ricard directly, both companies have been active in lobbying for its passage. Bacardi has long claimed that the Cuban government’s seizure of the Havana Club brand was an illegal expropriation, and this law solidifies their legal claim over the name in the U.S. market.
Despite the law’s passage, the legal battle is far from over. Cubaexport continues to hold the trademark for the Havana Club brand outside the U.S., and the two companies are expected to continue their rivalry in global markets. For now, however, Bacardi stands victorious in the U.S., as the law effectively shields its use of the trademark.
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