Bacardi asks US court to ‘strike’ Havana Club mark

16th March, 2016 by Kristiane Sherry

Bacardi has asked a US district court to “strike” the Havana Club trademark from the official register, the latest move in a battle with Cubaexport over the rights to the brand name in the country.

Havana-Club

Bacardi has filed a new complaint with a US district court asking for the Havana Club mark to be struck from the register

In the filing, the Bermuda-based drinks group alleges that Cubaexport, an agency of the Cuban government, and Havana Club Holding S.A., the joint venture company between the Government of Cuba and Pernod Ricard, engaged in “elaborate, misleading, fraudulent and deceptive activities” when “obtaining, maintenance and renewal of the Havana Club trademark in the U.S.”

The amended complaint asks the US District Court for the District of Colombia to cancel the Cuban government’s Havana Club trademark registration in the US Patent & Trademark Office (PTO).

Bacardi is also seeking a declaration that it has US common law rights in the mark, and that Bacardi’s use of ‘Havana Club’ does not infringe any mark owned by the Cuban government. In addition, it is asking for an injunction prohibiting Cubaexport from registering any similar mark in the US, or “interfering” with Bacardi’s use of the brand name.

Following the filing, Pernod Ricard released a statement confirming it is “aware” of the amended complaint.

Bacardi acquired the US rights from Havana Club’s founders, the Arechabala family, and has been selling the Puerto Rico-made rum in the market since the mid-1990s.

The family’s business assets were seized by the Cuban government during the Cuban revolution more than 60 years ago.

In January this year, the US Office of Foreign Assets Control (OFAC) and the PTO granted Cubaexport permission to renew the brand’s mark in the US, where Bacardi sells its own brand of Havana Club rum.

The PTO then granted Cubaexport the renewal in the US until 2026, meaning a court battle between the two parties now looms.

“We are extremely disappointed to have to resort to using the precious time and resources of the US justice system due to the failure of the US government in following established legal and public policy protecting the rights of those who have suffered confiscations of property,” says Rick Wilson, senior vice president for external affairs for Bacardi in the US.

“A ‘let the courts decide’ mentality is not the way to go when, for decades, the Cuban government and its business partner intentionally and knowingly concealed and misrepresented to the PTO the pertinent facts that have undermined its claims as the lawful owner of the mark in order to deceive the PTO and maintain the registration.”

Ian FitzSimons, general counsel of Pernod Ricard, said: “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 US since 1976, and owns the rights to the Havana Club trademark everywhere it is sold around the world. We look forward to letting the Court decide the case on the merits.”

The timing of the trademark renewal follows the December 2014 move by the US and Cuban governments to start to ‘normalise’ diplomatic relations.

While the long-running trade embargo largely remains in place, Congress could vote to dismiss the embargo entirely which would enable Cuban rum to be sold in the US once more.

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