When Fidel Castro took power in 1959 he nationalized the Cuban economy. In the wake of the confiscation, the US Foreign Claims Settlement Commission (FCSC) created a registry to record the Cuban assets seized from American citizens and corporations. Neither these claims nor the claims of Cuban citizens have ever been settled.
While there has been no movement on asset claims since 1959, there has been a lot of litigation around two Cuban brands that have current economic value, mostly through ex-US sales – and could become much more valuable when the US embargo against Cuba allows US residents a taste of Cuba’s forbidden fruit in the form of its world-famous cigars and rum.
Havana Club® Rum
Havana Club®‘s trademark’s history is the envy of any enterprising trademark attorney. When Jose Arechabala S.A. was nationalized after the Cuban revolution, the Arechabala family fled Cuba, stopped producing rum and in 1973 allowed the US trademark registration for Havana Club to lapse. Taking advantage of the lapse, the Cuban government registered the mark in the US in 1976. In 1993, The brand was then assigned by the Cuban government to the French spirits giant, Pernod Ricard SA, it’s global marketing partner.
In 1994, US-based Bacardi obtained the Arechabala family’s remaining rights in the brand and began producing limited amounts of rum in Puerto Rico under the Havana Club® name. Between 1995 and 1996, Bacardi sold 922 cases in the US. Pernod Ricard successful sued in two of the first three legal cases that make up the first round of litigation on the matter.
In 1998, the US Congress passed the “Bacardi Act”, which protected trademarks related to expropriated Cuban companies. It applied only to the Havana Club® trademark. The act was ruled illegal by the World Trade Organization in 2001 and 2002, on the grounds that it singled out one country – Cuba.
A second round of litigation occurred (from 2009-2012) through the US Federal court system and the Trademark Trial and Appeal Board. Bacardi prevailed again. After this defeat, Pernod Ricard created a similar “Havanista” mark as a plan B option for future Cuban rum sales in the US. And the US Supreme Court’s refusal to address the matter appeared to settle the dispute.
This week, in a twist, the US Patent and Trademark Office ruled that Cubaexport, the Cuban entity claiming ownership of the Havana Club® trademark, is the owner of the trademark. Bacardi Executive Vice President of External Affairs Rick Wilson said the company would “take every means available to fight this. It’s appalling that this administration goes ahead and grants this license to the Cuban government for assets that were confiscated,” he said of the Obama administration. More litigation is expected.
The Cohiba® cigar brand is known worldwide as a symbol of quality and exclusivity. Despite its near universal notoriety, the trademark is actually the property of two companies that have been locked in a legal battle in the US for more than 17 years.
Cohibas® that are legally purchased in the US are Dominican Republic-produced cigars made by General Cigar. Culbro Corp., which has since been merged into General Cigar, obtained a US registration for the mark “Cohiba” in 1981. General Cigar obtained a second US registration in 1995.
Cubatabaco (Empresa Cubana del Tabaco), owned by the Cuban government, began producing cigars under the name “Cohiba” pursuant to a trademark registered in Cuba in 1972. In the 1970s, Cubatabaco registered the trademark in more than 115 countries, except in the US.
Imperial Tobacco Group PLC, based in the UK, currently distributes all Cuban cigars sold world-wide through a joint venture with Cubatabaco.
US law, under the Cuban Assets Control Regulations (CACR), prohibits Cuban merchandise from being sold in the US – thus, in 2005, Cubatabaco’s legal efforts to claim the trademark failed because it would have resulted in a transfer of prohibited proprietary rights to the mark under the CACR.
In 2006, General Cigar’s legal victory appeared insurmountable when the US Supreme Court denied Cubatabaco’s petition for writ of certiorari.
In a surprising legal twist, the US Court of Appeals for the Federal Circuit ruled in favor of Cubatabaco by giving it standing to seek a cancellation of the registrations that blocked its own ability to register trademarks. This 2014 ruling means that the Second Circuit’s 2005 determination that Cubatabaco could not prevail in an infringement action – since the relief sought would result in a prohibited transfer of the mark – was “irrelevant to the proceeding before the Board,” according to the Federal Circuit.
In February of this year, the US Supreme Court handed another victory to Cubatabaco by refusing to intervene in the legal case against General Cigar. The decision allows Cubatabaco to once again request the cancellation of the trademark registered by General Cigar.
The case will now move to the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). If the US embargo against Cuba is lifted, and the legal provisions of the CACR are rescinded, Cubatabaco could gain control of the Cohiba® trademark in the US.