The more than decade-long battle between Bacardi and Pernod Ricard over the U.S. rights to the “Havana Club” trade mark has come close to its end.
A U.S. federal judge dismissed a Cuban lawsuit Monday over the termination of U.S. trade mark rights for its Havana Club rum. Bacardi has been seeking to take over the name as its own in the United States.
Cubaexport, Cuba’s state-owned export enterprise, filed the lawsuit appealing a decision in August 2006 by the U.S. Patent and Trademark Office that deemed the current registration on Havana Club trade mark “canceled/expired”. Cubaexport has a joint venture with Pernod Ricard to sell Havana Club internationally.
The dispute is entangled in property seizures during the Cuban revolution, the trade embargo with the island nation and U.S. trade mark law. Cuba’s Havana Club is not sold in the United States because of the trade embargo, but the company got a U.S. trade mark for the name in 1976 for future opportunities in case the embargo is lifted.
Bacardi began selling its own “Havana Club” in 2006 in Florida and has an application pending to register the trade mark in its own name. Bacardi’s Havana Club is made in Puerto Rico using the recipe developed by the Arechabala family who created the rum brand in 1935. Fidel Castro’s government seized the family’s plant and trade mark on Jan. 1, 1960.
The family made a deal to sell the recipe and “Havana Club” brand name to Bacardi in the mid-1990s. Bacardi also sold the product in the United States for a few years shortly after making the deal, but pulled it from shelves after the dispute began over the rights to the brand.