Bacardi is back in court in its two-decades-long quest for the right to use the iconic Havana Club rum trademark in the United States.
In January, the U.S. Patent and Trademark Office renewed the U.S. registration of the Havana Club mark for Cubaexport, the Cuban partner of French spirits maker Pernod Ricard in the worldwide distribution of Havana Club.
But since the early 1990s when Bacardi purchased rights to the Havana Club name and recipe from the Arechabala family, who had made the rum in Cuba before going into exile after the 1959 Cuban Revolution, Bacardi has been claiming it is the rightful owner of the trademark in the United States. The Arechabalas, however, had allowed their U.S. trademark registration to lapse in the 1970s and Cuba snatched it up.
Bacardi won a string of early court victories and thought the stage was set in 2012 for the patent office to cancel Cubaexport’s registration and allow it to register the Havana Club mark.
But the matter got tied up in embargo questions. It languished until January when Cubaexport, which had lost the registration because the U.S. Office of Foreign Assets Control wouldn’t give it a license to pay its renewal filing fee, got the green light to pay the fee. The next day the trademark registration was once again Cuba’s. In February, Cubaexport renewed the U.S. registration through 2026.
Now Bacardi has filed an amended complaint in federal court in Washington D.C. asking U.S. District Judge Emmet Sullivan to cancel the Cuban government’s registration of Havana Club. It contends there was fraud in the original registration filing and that it has common law rights because it distributes its own three-year-old Havana Club rum, which is made in Puerto Rico, in some retail stores and high-end bars in Florida, Georgia, Massachusetts, Colorado and Michigan.
The embargo currently prevents Havana Club rum made in Cuba from being sold in the United States, but the battle is about future U.S. market share for the rum when the embargo is no longer in place.
Bermuda-based Bacardi contends that Section 211, which was attached to a 1998 federal spending bill, prohibits any U.S. court from recognizing or otherwise validating a trademark associated with a business that has been illegally confiscated. The Arechabalas’ business was taken by the Cuban government in 1960, according to Bacardi.
“Following the U.S. government’s failure to uphold the protection of confiscated properties, the U.S. courts will now need to step in and recognize the rights of legitimate owners whose properties have been expropriated,” said Eduardo Sánchez, senior vice president and general counsel for Bacardi.
But Pernod Ricard said that Bacardi’s arguments have already been rejected by the Trademark Trial and Appeal Board.
“We are confident that Cubaexport will prevail in defending its registration in the pending litigation. Cubaexport has been the registered owner of the Havana Club trademark in the U.S. since 1976, and owns the rights to the Havana Club trademark everywhere it is sold around the world,” said Ian Fitzsimons, Pernod Ricard’s general counsel. “We look forward to letting the court decide the case on the merits.”
Bacardi also has filed a Freedom of Information Act request asking for all documents and communications from the patent office, the Office of Foreign Assets Control, the State Department, the White House, the National Security Council, Treasury and/or any third partners relevant to the decision to renew the Havana Club registration.