Bacardi sues USPTO over Havana Club trademark

Bacardi has filed a lawsuit against the US Patent and Trademark Office for renewing a Havana Club trademark, as part of a long-running feud with Pernod Ricard.

The two drinks firms are currently embroiled in a trademark battle over Havana Club.

Bacardi sells a brand of Havana Club rum, distilled in Puerto Rico, in the US. Pernod Ricard owns the international rights to the Cuba-made Havana Club brand outside of the US, since the country’s ban on Cuban imports remains.

However, in February 2016, the US Patent and Trademark Office (PTO) renewed the trademark of Pernod Ricard’s brand for the next 10 years, setting in motion a lengthy legal challenge from Bacardi.

The French drinks group has owned the Havana Club brand since 1993 as part of a joint venture with Cubaexport – an agency under the Cuban government. The USPTO first issued Cubaexport with the Havana Club trademark in 1976.

Bacardi has now filed a lawsuit against the USPTO in the US District Court for the Eastern District of Virginia.

In the lawsuit, Bacardi said the registration had expired in 2006 by operation of the Lanham Act and was declared ‘cancelled’ as Cubaexport had failed to pay the required filing fee within the six-month period stipulated by the statute. As such, Bacardi alleged that the USPTO had ‘abused its authority’ by resurrecting the ‘long-dead’ Havana Club registration.

‘Moral outrage’

Bacardi called the renewal of the trademark a ‘moral outrage’ which ‘violates the law and must be set aside’.

A Bacardi spokesperson said: “Bacardi has pledged that we would take every means available to protect Havana Club, and this complaint against the United States Patent and Trademark Office is a continuation of that ongoing fight.

“More than 15 years ago, the US Patent and Trademark Office acknowledged that Cuba’s registration of the Havana Club trademark ‘will be cancelled/expired’ because Cuba had failed to timely fulfil the mandatory renewal requirements set forth in the Trademark Act.

“And yet, the Trademark Office inexplicably reversed course in 2016 when it exceeded its statutory authority and illegally accepted Cuba’s renewal application in contravention of established law. This latest complaint by Bacardi is asking the federal court to remedy this injustice.”

Bacardi said the USPTO action ‘seriously prejudices’ the company. The Bermuda-based firm said it had submitted an application to the USPTO for the Havana Club mark, which remains pending, however it expects it to be rejected due to the registration by Cubaexport of the same mark.

In the 1990s, Bacardi acquired the US rights from Havana Club’s founders, the Arechabala family, and has been selling its Puerto Rico-made rum in the market since 1995.

The Arechabala family’s business assets, incorporated under the name JASA, were seized in 1960 by the Cuban government during the Cuban revolution. In 1966, the Cuban government allegedly transferred the Havana Club trademark that had been confiscated from JASA to Cubaexport, the lawsuit said.

Bacardi is asking the court to declare that Cubaexport’s trademark expired in 2006 and is ordering the USPTO to remove it from the registry.

Pernod Ricard response

A Pernod Ricard spokesperson said: “Cubaexport has been the rightful owner of the Havana Club trademark in the United States since 1976, having registered it after it was abandoned by its previous owners in 1973.

“This registration remained undisputed for 17 years, until Pernod Ricard entered into a joint venture in Cuba in 1993 to produce and promote Havana Club rum and became a global competitor in the rum category. In 2016, the trademark was lawfully renewed with the US Patent and Trademark Office until 2026.”

Bacardi and Cubaexport are also currently embroiled in a lawsuit in the US District Court of the District of Columbia over the trademark, with the Bermuda-based company seeking to cancel Cubaexport’s registration.

Regarding the Columbia lawsuit, a Pernod Ricard spokesperson said: “We are confident that this matter will be decided in favour of Cubaexport on the merits in the US courts because the previous owners abandoned all rights to the trademark and the USPTO properly renewed Cubaexport’s registration.

“In the meantime, Pernod Ricard remains committed to crafting the true Havana Club in Cuba, following the Cuban rum tradition, and bringing a bit of Cuba in a bottle to consumers across more than 120 countries.”

According to Brand Champions 2021 data, Pernod’s Havana Club is the fifth biggest-selling rum brand in the world, with 4.1 million nine-litre cases sold in 2020.