Bacardi files complaint over Cuba’s registration of Havana Club rum trademark

Bacardi files complaint over Cuba's registration of Havana Club rum
trademark

Cubaexport holds the trademark registration in the U.S. through 2026
Bacardi claims the trademark registration acquired through fraud
The dispute is over distribution of Havana Club rum after embargo is lifted
BY MIMI WHITEFIELD
mwhitefield@miamiherald.com

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.

Source: Bacardi files complaint over Cuba's registration of Havana Club
rum trademark | Miami Herald -
http://www.miamiherald.com/news/business/international-business/article66223692.html