Pernod and Bacardi back in rum trademark war

18th January, 2016 by Amy Hopkins

Pernod Ricard has received approval to renew its Havana Club trademark in the US following a decades-long legal battle with Bacardi, which said it is “shocked and very concerned” by the move.

Havana-Club

Bacardi has vowed to fight the approval of Pernod Ricard’s Havana Club rum trademark in the US

Due to a trade embargo between US and Cuba, which has been in place since 1961 when the Cuban revolution led to communism, French drinks group Pernod Ricard has been unable to launch Cuba-made Havana Club in the US.

Bacardi has been selling its own brand of Havana Club rum, made in Puerto Rico, in the US since the mid-1990s.

The group acquired the US rights from Havana Club’s founders, the Arechabala family, which fled Cuba during the revolution. The Cuban government seized the family’s rum-making facilities and personal assets during the revolution, without compensation.

Bacardi and Pernod have therefore been locked in a long-running legal battle, with the French firm attempting to block Bermuda-based Bacardi’s rights to the trademark.

Bacardi won a US trademark dispute in 2012, while Pernod Ricard continues to own the Havana Club trademark in the rest of the world as part of a joint venture with the Cuban government.

The French firm has already registered the alternative Havanista rum trademark in the US in preparation for a time when the trade embargo is lifted.

Nevertheless, this morning (18 January) the group released a short statement claiming that Cubaexport, the Cuban entity that owns the US trademark registration for Havana Club, applied for and received a license from the US Office of Foreign Assets Control allowing it to renew the trademark registration in the United States.

While Pernod and the Cuban government cannot sell Havana Club in the US due to the embargo, they have previously owned a trademark for the brand in the country. However, the US government rejected a application to renew rights to the mark in 2006.

Due to conditions of the embargo, the Cuban government must apply to the US government to renew trademarks every 10 years.

“The Havana Club trademark registration has been renewed at the US Patent and Trademark Office through January 27, 2016,” the group said. “A renewal of the trademark registration through January 27, 2026 has also been submitted.”

While trademark registration has only been granted until the end of this month, Pernod Ricard expects that its application to register the mark through to 2026 will also be granted.

Restoration of diplomatic ties

In December 2014, the US and Cuba agreed to restore diplomatic relations. Under the measures, the US opened an embassy in Havana, Cuba, and is also undertaking efforts to lift its 54-year trade embargo against Cuba, a move urged by Cuban president Raul Castro and which only US Congress can make.

While Cuban rum cannot yet be sold in the United States, import restrictions have been eased, meaning US citizens travelling to Cuba can now bring up to US$100 worth of tobacco and rum into the US.

Should Congress vote to dismiss the embargo entirely, legal tensions between Pernod, the Cuban government, Bacardi and the US government are set to intensify.

“Bacardi is shocked and very concerned by this unprecedented action taken by the United States government,” a statement from Bacardi read.

“In essence, this administration has reversed long-standing US and international public policy and law that protects against the recognition or acceptance of confiscatory actions of foreign governments.

“With this decision, this US administration clearly sends the message that it no longer supports US law and accepted worldwide principles that prevent registration or renewal of trademarks obtained through confiscation, without compensation to the original owners.”

Bacardi claims that the Cuban government’s previous trademark registration for Havana Club in the US was “illegal”, and as such describes this latest move as akin to resurrecting “dead registration”.

“Bacardi has and will continue to pursue all the necessary legal actions to defend its position surrounding the legitimacy of Bacardi’s rights and ownership of Havana Club rum,” the group said.

“As we have maintained all along, Bacardi is the legitimate owner of the brand.”

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