- HAVANA CLUB: One Mark, Two Owners?
- April 19, 2011 | Authors: Roberta S. Bren; Jeffrey Sirota Molinoff
- Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
Two of the largest rum manufacturers in the world, Pernot Ricard SA, dba Cuba Export, and Bacardi & Company Limited, continue the almost twenty year battle over the mark HAVANA CLUB despite what appear to be insurmountable problems stemming from the Cuba Trade Embargo.
On March 29, 2011, the U.S. Court of Appeals affirmed the District Court’s decision that the 1998 amended exception to the Cuba Trade Embargo that eliminated the ability of Cuban companies to register or renew certain trademarks applies, and the HAVANA CLUB registration cannot be renewed by a Cuban entity. Pernot Ricard SA, the owner of the HAVANA CLUB registration, indicates that this decision will be appealed, keeping the HAVANA CLUB trademark in limbo.
The HAVANA CLUB trademark was first used by a company owned by the Arechabala family in Cuba. The company was nationalized by the government of Cuba under Fidel Castro. Subsequently, the nationalized company, Cuba Export, registered the mark HAVANA CLUB with the USPTO in 1976 and renewed its registration in 1996 under a 1963 exception to the Cuba Trade Embargo. Bacardi, on the other hand, claims it bought rights to the name HAVANA CLUB from the Arechabala family. Bacardi further claims it produces its rum in Puerto Rico using the recipe of Jose Arechabala, the original maker of HAVANA CLUB rum.
Until now, Cuba Export’s registration of the trademark HAVANA CLUB has blocked Bacardi’s application for registration. However, in 1998 Congress modified the exception to the Cuban Assets Control Regulations that had allowed Cuba Export to register and renew its HAVANA CLUB trademark. As a result, the United States Department of the Treasury, Office of Foreign Assets Control refused to allow renewal in 2006. Cuba Export appealed the decision and lost. Click on the above link to read the DCCA Opinion. However, Pernot Ricard SA, the owner of the to-be-cancelled registration and which is doing business as Cuba Export, has stated it will appeal the recent (March 29, 2011) decision of the DC Circuit Court of Appeals which upheld the decision of the United States Department of The Treasury, Office of Foreign Assets Control refusing to allow the renewal of the 1976 trademark registration.
Even if Cuba Export’s registration is cancelled, the way may not be clear for Bacardi’s application. The U.S. Patent and Trademark Office may refuse registration, or Cuba Export may oppose the application asserting that because the rum does not come from Havana, the mark is geographically deceptively misdescriptive.