The Havana Club Saga: Threatening More than Just “Cuba Coke”

Taylor, Emily | January 1, 2004

The saga of the “Havana Club” brand began when the family-owned distillery in Cuba that created “Havana Club” rum was confiscated by the Cuban government during the communist revolution. Years later, a dispute arose as to the rightful owner of the U.S. trademark of the name. In an attempt to settle the matter, a U.S. statutory provision was passed that prevents the registration or protection (in the United States) of trademarks linked to businesses that were confiscated by the Cuban government. The statutory provision, § 211 of the Omnibus Appropriations Act of 1998 (“§ 211”), may have been in keeping with the United States’ opposition to Cuba’s communist government and the confiscation of private property, but it was found to violate the United States’ obligations under international treaty law. The Dispute Settlement Body (“DSB”) of the World Trade Organization (“WTO”) determined, and the Appellate Body (“AB”) agreed, that § 211 violates the Agreement on Trade Related Aspects of Intellectual Property (“TRIPS Agreement”). The AB requested that the United States “bring its measure . . . into conformity with its obligations” under the treaty. This comment will examine the options facing the United States in light of the AB’s determination that § 211 violates the TRIPS Agreement.