Bacardi’s Epic Trademark Battle Over Havana Club Rum

Bacardi’s Epic Trademark Battle Over Havana Club Rum

Havana Club®‘s trademark’s history is the envy of any enterprising trademark attorney.

Havana Club rum

Cuba’s Havana Club label

When Jose Arechabala S.A. was nationalized after the Cuban revolution, the Arechabala family fled Cuba, stopped producing rum and in 1973 allowed the U.S. trademark registration for Havana Club to lapse. Taking advantage of the lapse, the Cuban government registered the mark in the U.S. in 1976. In 1993, the brand was then assigned by the Cuban government to the French spirits giant, Pernod Ricard SA, it’s global marketing partner.

In 1994, U.S.-based Bacardi obtained the Arechabala family’s remaining rights in the brand and began producing limited amounts of rum in Puerto Rico under the Havana Club® name. Between 1995 and 1996, Bacardi sold 922 cases in the U.S. Pernod Ricard successful sued in two of the first three legal cases that make up the first round of litigation on the matter.

In 1998, the U.S. Congress passed the “Bacardi Act”, which protected trademarks related to expropriated Cuban companies.  It applied only to the Havana Club® trademark. The act was ruled illegal by the World Trade Organization in 2001 and 2002, on the grounds that it singled out one country – Cuba.

A second round of litigation occurred (from 2009-2012) through the U.S. Federal court system and the Trademark Trial and Appeal Board. Bacardi prevailed again. After this defeat, Pernod Ricard created a similar “Havanista” mark as a plan B option for future Cuban rum sales in the U.S.  And the U.S. Supreme Court’s refusal to address the matter appeared to settle the dispute.

In January of this year, in a twist, the U.S. Patent and Trademark Office ruled that Cubaexport, the Cuban entity claiming ownership of the Havana Club® trademark, is the owner of the trademark. Bacardi Executive Vice President of External Affairs Rick Wilson said the company would “take every means available to fight this.  It’s appalling that this administration goes ahead and grants this license to the Cuban government for assets that were confiscated,” he said of the Obama administration.  More litigation is expected.

According to Pernod Ricard’s annual report, Havana Club’s sales totaled 4 million cases in 2015. The company’s total net sales in 2o15 was $9.7 billion.

Havana Club’s CEO, Jerome Cottin-Bizonne, has said the company is investing $90 million over the next few years to expand its operations in Cuba in preparation for the opening of the U.S. market.

Pernod Ricard S.A. is pleased to confirm that the U.S. Patent and Trademark Office has renewed the HAVANA CLUB trademark registration in the United States through January 27, 2026.

The renewal of the U.S. trademark registration means that the dispute over ownership of the Havana Club brand in the United States can be returned to the U.S. courts, where it can be decided on its merits.  “We are confident that Cubaexport, the Cuban entity that owns the U.S. trademark registration for Havana Club rum, will prevail in defending its registration in the pending litigation,” said Ian FitzSimons, General Counsel of Pernod Ricard.

Havana Club rum is the only 100% authentic and genuine Cuban rum distributed in more than 120 markets throughout the world, in which our joint-venture Havana Club Holdings owns the rights to the Havana Club trademark.  Pernod Ricard hopes that, in the future, it will be able to distribute Havana Club rum in the United States. – Press Release by Pernod Ricard S.A dated February 19, 2016

Bacardi’s Own Havana Club® Rum

Bacardi’s Havana Club® Rum, rolled out into the U.S. market in June 2016, is based on the original recipe created by the Arechabala family in Cuba in 1934. The recipe was personally transcribed by Ramon Arechabala and given to Bacardi as part of the agreement between the two family companies.

In 1995, with the Arechabalas’ agreement, Bacardi re-launched Havana Club® in the U.S. The brand is comprised of Havana Club® Añejo Blanco and the recently released Havana Club® Añejo Clásico distilled in Puerto Rico.

bacardi's havana club rum

Barcardi’s Havana Club Rum label is distinctly different from Cuba’s Havana Club label

 

Bacardi’s Epic Trademark Battle Over Havana Club Rum was last modified: January 3rd, 2017 by Cuba Journal

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