Global Intellectual Property Center

Congress asked to repeal Cuban trademarks law

Congress asked to repeal Cuban trademarks law

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. trademarks currently registered in Cuba by more than 400 American companies,” testified Bill Reinsch before the House Judiciary Committee.

The United States is the largest supplier of food and agricultural products to Cuba, with American companies exporting about $500 million in these commodities to the Caribbean country each year.

At the same hearing, Mark T. Esper, executive vice president of the U.S. Chamber of Commerce’s Global Intellectual Property Center, told the committee that Section 211 has put the United States in violation of its international treaty obligations under the World Trade Organization. “Further, it undermines the United States’ credibility when we argue in defense of IP (intellectual property) laws in UN organizations and when dealing with other governments,” he said.

The WTO has ruled that Section 211 violates two basic principles of the Trade Related Aspects of Intellectual Property (TRIPS) agreement, the international agreement between WTO members that governs intellectual property national treatment and most-favored nation status. The WTO gave the Congress until Jan. 3, 2003 to provide a remedy that would make Section 211 compliant with TRIPS.

“Still, seven years later, the world’s foremost proponent of a rules-based international trading system managed by the WTO — the United States — has not fixed this problem,” Esper said.

Reinsch noted that Section 211 also violates the General Inter-American Convention for Trademarks and Commercial Protection, which requires a mutually honored recognition of intellectual property rights between the U.S. and Cuba.

“The only effective remedy is repeal (of Section 211),” Reinsch said. “Repeal would ensure continued U.S. leadership on intellectual property issues by bringing the U.S. into compliance with all existing treaty obligations and by exemplifying high standards of intellectual property protection, including our commitment not to assign trademarks on political criteria.”