World Trade Organization

• Author: International Law Group

On August 6, 2001, the World Trade Organization circulated a Panel Report finding that Section 211 of the U.S. Omnibus Appropriations Act [Pub.L. 105-277, Section 101(b), 112 Stat. 2681] is in violation of the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement). Section 211 concerns trademarks, trade names, or commercial names that are the same or substantially similar to those related to businesses or assets confiscated by the Cuban Government on or after January 1, 1959.

In particular, Section 211(a)(2) provides that "[n]o U.S. court shall recognize, enforce or otherwise validate any assertion of rights by a designated national based on common law rights or registration obtained ... of such a confiscated mark, trade name, or commercial name." This Section was allegedly included in the Act upon request of Bacardi, Ltd., a Bermuda company, to prevent Havana Club Holdings (HCH) from enforcing the "Havana Club" trademark in the U.S.

The European Communities (EC) had brought the complaint on July 7, 1999, claiming that Section 211 denied court access for trademark owners seeking to assert their intellectual property rights.

The present dispute developed out of a Cuban rum trademark, "Havana Club." Havana Club was originally owned by a Cuban family and abandoned in 1973. In 1976, Cubaexport acquired the trademark and in 1993 sold it to Pernod-Ricard, a French company. Pernod-Ricard is engaged in a joint venture, HCH, with Havana Rum and Liquors of Cuba, to market the Havana Club rum.

The Panel agrees with the EC that Section 211 violates the TRIPS Agreement and that Section 211 should not apply in circumstances where the owner has abandoned the trademark. Thus, the Section should not apply to the Havana...