When it comes to trademark disputes, few can rival the fierce battle over the rights to Havana Club rum.

The latest chapter in the long-running saga, which has its roots in pre-Revolutionary Cuba, came Wednesday before the House Judiciary Committee. The topic: how to reconcile a U.S. law that effectively ended the case with a World Trade Organization ruling that it violates the Trade Related Aspects of Intellectual Property Rights, or TRIPS.

On one side is Bacardi, the world's biggest rum producer. On the other is Pernod Ricard, which sold $10 billion worth of alcohol last year.

"On its surface this matter appears to be about U.S. compliance with the TRIPS Agreement," testified Bruce Lehman, expert counsel for Bacardi and former head of the U.S. Patent & Trademark Office. "However under the surface, it involves much more."

The law at issue, known as Section 211, bars U.S.

Trade representatives in Washington on Wednesday asked House lawmakers to support the repeal of Section 211 in the fiscal year 1999 Omnibus Appropriations Act, which prohibits the United States from honoring trademarks of Cuban origin that were associated with businesses nationalized by the Cuban government in the early 1960s.

The repeal of this provision is included in several House bills.

“If this provision is maintained in law, its long-term impact will be to jeopardize U.S. standing in the global intellectual property debate and to invite retaliation by Cuba, which could jeopardize trademark protection for over 5,000 U.S.

Repeal Would Restore U.S. Compliance with IP Treaties

Washington, D.C. - Mark Esper, executive vice president of the U.S. Chamber of Commerce’s Global Intellectual Property Center (GIPC), called for a full repeal of Section 211 of the FY 1999 Omnibus Appropriations Act today. Testifying before the House Judiciary Committee, Dr. Esper emphasized the importance of intellectual property (IP) rights to job creation and to the nation’s overall global competitiveness and recommended this repeal to comply with current U.S. trade obligations and to maintain America’s status as a defender of IP rights and the rule of law.

Excerpts from Dr. Esper’s testimony as submitted to the House Judiciary Committee are below.

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.