Bacardi's fight to retain Havana Club name resurfaces in Congress

Posted on Wednesday, 03.03.10
Bacardi's fight to retain Havana Club name resurfaces in Congress
BY LESLEY CLARK
lclark@miamiherald.com

WASHINGTON -- A years-long battle over the rights to a coveted brand of
rum returned to Capitol Hill Wednesday as Miami-based Bacardi urged a
House committee not to repeal a 1998 provision that gave it the U.S.
rights to the name.

The provision -- better known as Section 211 -- has been under fire from
the World Trade Organization, which in 2001 ordered the United States to
revise the law.

Bills have been introduced that seek to satisfy WTO rules and would
tweak the provision, but critics say the entire provision should be
scrapped because it benefits a single company and could hurt the ability
of other U.S. companies to protect their trademarks.

``In order to live up to our treaty obligations, and indeed honor our
reputation andhistory of leadership when it comes to defending
intellectual property rights andthe rule of law,'' the provision should
be repealed, Mark Esper, vice president of the U.S. Chamber of
Commerce's Global Intellectual Property Center, told the House Judiciary
Committee.

But Bruce Lehman, a former assistant secretary of commerce and expert
counsel for Bacardi, told lawmakers that the provision is ``easily
correctable'' and that repealing it would ``send a terrible signal to
those throughout the world who wish to devalue intellectual property
rights.''

At issue is the right to the Havana Club name. Bacardi says it bought
the rights to the name in 1997 from the rightful owner, the Arechabala
family, who had the trademark seized from them without compensation when
Fidel Castro took power in Cuba.

But Cubaexport, a Cuban government company that partners with the French
liquor giant Pernod Ricard, argues it has title. It sells rum under the
Havana Club name in Cuba and around the world -- but not in the United
States because of the trade embargo against Cuba.

The tussle dates back more than a decade: Bacardi scored a major victory
when former Florida Republican Sen. Connie Mack tweaked a spending bill
to include language that essentially grants the company the U.S. rights
to the name by preventing U.S. courts from enforcing trademarks
confiscated by the Cuban government.

But after the French government complained, the World Trade Organization
objected. The latest legislation, sponsored by Rep. Debbie Wasserman
Schultz, D-Weston, is aimed at addressing WTO rules by not applying
solely to Cuban firms.

Committee chairman John Conyers, D-Michigan, acknowledged the history of
the controversy as he opened the hearing.

``This is a fascinating subject,'' he said, noting it spans Castro's
rise to power and more recently entangled former House Speaker Tom DeLay
of Texas, who dismissed accusations from critics that he accepted a
$20,000 contribution from Bacardi to one of his political action
committees in exchange for supporting its position.

Lehman told lawmakers that opponents of the embargo against Cuba have
seized on the issue. The bill that would do away with the Bacardi
provision is sponsored by Rep. Charles Rangel, D-New York, who supports
travel and trade with Cuba.

``The debate on the embargo centers on whether it helps or hinders
Cuba's transition to a free-market economy,'' Lehman said in prepared
remarks to the committee. ``This goal is not advanced by giving effect
to Cuban confiscatory measures in the United States.''

Bacardi's fight to retain Havana Club name resurfaces in Congress -
Business Breaking News - MiamiHerald.com (3 March 2010)
http://www.miamiherald.com/2010/03/03/1510465/bacardis-fight-to-retain-havana.html