WRITTEN QUESTION E-0858/00

by Carles-Alfred Gasòliba i Böhm (ELDR) to the Commission

(22 March 2000)

Subject: Dispute over trademark use

The Commission is considering proposing the convening of a WTO panel with a view to settling a possible dispute with the US concerning an American law of 1998, namely Section 211 of the Omnibus Appropriation Act.

In fact, this proposal is linked to a dispute concerning the use of the trademark Havana Club, between a company owned 50 % by a French group and 50 % by the Cuban government, and another company which considers itself the legitimate owner of the trademark.

What grounds does the Commission have for intervening in what is by its nature a private dispute?

If the Commission does in the end propose that a WTO panel be convened, could this step be considered as implying that its intention to support the existing Cuban government?

Is the Commission taking account of the fact that the Cuban government is making use of property and rights which have been expropriated without payment of the compensation which would be due under the rule of law?

Answer given by Mr Lamy on behalf of the Commission

(19 April 2000)

The current dispute in the World Trade Organisation (WTO) concerns an American law, Section 211 of the United States Omnibus Appropriations Act 1998, which, in the view of the Community and its Member States, violates a number of provisions of the WTO Agreement on trade-related aspects of intellectual property rights (TRIPs agreement). The main aim of the Commission is the proper implementation and application by the United States of the WTO TRIPs agreement bearing in mind that Section 211 can potentially affect all European companies dealing with Cuba. It should be in the interest of the Community and its Member States to ensure that the provisions of the WTO TRIPs agreement are respected by all WTO members.

The ongoing WTO dispute does not concern the question whether or not foreign uncompensated expropriations have to be recognised by other states. In fact, Section 211 affects American trademarks which were not and could not be expropriated by the Cuban government. Individuals and companies expropriated by the Cuban government remained the owners of property outside Cuba. In particular, their rights in trademarks registered in the United States were unaffected by the Cuban revolution.

The WTO dispute rather relates to the treatment of trademarks in the United States which are identical or similar to trademarks which previously belonged to Cuban owners who failed to renew their trademarks before United States authorities. As a consequence of this failure by the previous Cuban owners, which is independent from the expropriation of their assets in Cuba by the Cuban Government, the respective trademarks fell into the public domain and no longer belonged to their Cuban owners, like the Havana Club trademark referred to by the Honourable Member. Such trademarks can be registered, renewed and enforced in the United States by new owners, however, only under certain conditions. These conditions are contained in Section 211 of the United States Omnibus Appropriations Act which was adopted by the United States almost 40 years after the Cuban revolution.