Jan 5, 2022

Havana Oh No No

Continuing a decades-long dispute over the Havana Club rum brand, Bacardi has launched legal action against the United States Patent and Trade Mark Office, requesting the court overturn a decision which allowed Cubaexport to renew its US trade mark registration for HAVANA CLUB in 2016 after 10 years in limbo.

Havana Club was originally produced in Cuba by the Arechabala family until the Cuban Revolution in 1959, when the Cuban government took over the family assets. The government then entered into a joint venture with Cuban state company “Cubaexport” and beverages company “Pernod Ricard”. Although the product was distributed globally, the US embargo prohibited the sale of goods in the US from Cuba.

In 1995, beverage company Bacardi and the Arechabalas family entered into a deal whereby the original recipe would be manufactured in Puerto Rico under the mark “HAVANA CLUB” and sold in the US.

Cubaexport’s US 1976 registration was refused renewal in 2006 and thus registration was prohibited in the US. However, the restoration of full diplomatic relations between the US and Cuba in 2016 granted Cubaexport a licence to renew their US registration.

Bacardi has issued proceedings in Virginia federal court for “unlawful and arbitrary actions” in renewing the trade mark more than 10 years after the expiry of the registration. Many US politicians have expressed their opinions on the matter, placing the matter firmly into the political arena. But politics aside, Bacardi’s case rests upon the fact Cubaexport failed to pay the required filing fee back in 2006 when it applied for renewal of registration. It is yet to be heard in whose favour the Court will rule.

If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.

in: EU/International, Legal News, News, Trade Marks

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