Havana Club Rum

Trademark Dispute News

Pernod Ricard USA LLC v. Bacardi USA Inc, U.S. District Court, District of Delaware, No. 06-505.

Hatuey Beer Trademark

September 1, 2011

Bacardi owns Hatuey.com and Hatuey.us and features "Cuban Style Ale" coming Summer 2011. I am not a trademark expert but I know Hatuey Beer is sold in Cuba and I'm sure it's not Bacardi's Hatuey Beer.

However, I think Bacardi might win this trademark dispute... From BeerStreetJournal.com: Originally brewed in the Cervecería HATUEY in Santiago de Cuba in 1927, HATUEY was Cuba’s first premium beer. Joaquin Bacardi, a Harvard graduate with a degree in Chemical Engineering, was sent to Copenhagen in the early 1930s to learn the art and science of brewing, and became HATUEY beer’s first Brew Master.

Bacardi’s ‘Havana Club’ Rum Name Not False Advertising, Appeals Court Says

August 4, 2011 | By Don Jeffrey | Bloomberg

Pernod Ricard SA, the world’s second- biggest liquor maker, lost an appeals court ruling in its 17- year battle with Bacardi Ltd. over the right to use the name “Havana Club” on rum in the U.S. market.

The U.S. Court of Appeals in Philadelphia ruled today that a lower-court judge was correct in saying that consumers wouldn’t be confused into thinking Bacardi’s Havana Club rum was made in Cuba because the label states it was made in Puerto Rico.

“No reasonable interpretation of the label as a whole could lead to the conclusion that it is false or misleading,” U.S. Circuit Judge Kent Jordan said in an opinion that affirms the 2010 ruling by the U.S. District Court in Wilmington, Delaware.

“We’re certainly disappointed with the decision,” David Bernstein, a lawyer representing Pernod Ricard, said in a telephone interview. “If there’s any basis for an appeal, we’ll consider it.”

Pernod has been fighting with Bacardi over rights to the name in the U.S. since 1994, when Bacardi applied for a U.S. trademark for Havana Club. That application was suspended by the U.S. Patent and Trademark Office pending the results of litigation, Bernstein said. Pernod, based in Paris, sells Havana Club throughout the world, except in the U.S.

Trademark Eligibility

“Our conclusion in this case says nothing of whether the words ‘Havana Club’ are eligible for registration as a trademark,” Jordan said in the opinion today.

Pernod argued in its appeal that U.S. District Judge Sue Robinson “refused even to consider” the results of a Pernod- commissioned survey showing that about 20 percent of U.S. rum consumers were misled or confused by Bacardi’s Havana Rum bottle.

In today’s opinion, the judge said, “Survey evidence has no helpful part to play on the question of what the label communicates regarding geographic origin.”

“The court seems to be substituting its own view over that of consumers,” Bernstein, who is with Debevoise & Plimpton LLP, said of the decision.

Bacardi, based in Pembroke, Bermuda, argued that the survey was “fatally flawed” and that the front of its liquor bottle clearly states “Puerto Rican rum.” It also said in court papers that Havana as a brand name is “nothing more than puffery” and not a geographic indicator.

1963 Trade Embargo

“Bacardi applauds the appelate court’s decision which reaffirms that Bacardi has accurately portrayed both the geographic origin and Cuban heritage of our Havana Club rum,” Patricia Neal, a spokeswoman for Bacardi USA, said in an e-mailed statement.

Cuban trademarks have importance in anticipation of an end to the 1963 embargo by the U.S. that blocks most trade between the countries. Cuban-made rum can’t be legally sold in the U.S.

The Havana Club trademark was first used in the 1930s by Cuba’s Arechabala family, whose distilling company was confiscated by Fidel Castro’s revolutionary government. After the trademark owned by the Arechabalas lapsed, the state-owned Cubaexport registered it in the U.S. in 1976 and assigned it to the Pernod joint venture in 1993.

In 1998, Congress passed legislation making trademarks confiscated by the Cuban government unenforceable in the U.S. The law has been applied only to the Havana Club mark.

Havana Club Rights

The U.S. Court of Appeals for the D.C. Circuit in Washington upheld that law in March. Ruling against Pernod, it said the U.S. Treasury has the right to refuse to allow a Cuban state-owned group to renew its U.S. trademark for Havana Club. Pernod sells Havana Club throughout the world, except in the U.S., under that 1993 venture with Cubaexport.

Bacardi bought rights to the Havana Club name from the Arechabala family. The company distills rum in that name in Puerto Rico according to the recipe of Jose Arechabala, court papers state. The rum has been available in the U.S. since 2006 only in Florida.

U.S. consumers bought about 17 percent of the world’s rum, second only to India’s 29 percent, according to the London-based industry research firm International Wine and Spirit Research.

Pernod turned Cuba-made Havana Club into the world’s fourth-most-popular brand of standard rum, selling about 3.5 million cases a year, up from 400,000 cases sold in 1993, according to the research report.

Lawsuit in Spain

Without access to the U.S. market, Pernod’s Havana Club had 5 percent of the world’s rum sales, according to the report. In the U.S., Bacardi’s brands led the rum market with about 40 percent of sales, according to court papers.

In Spain, Bacardi sued Pernod in 1999, claiming it was the rightful owner of the Havana Club trademark.

Two Spanish courts ruled that the joint venture with Pernod was the proper owner because the Arechabala family had neglected its rights, both in allowing its trademark to expire and waiting too long to challenge ownership. Spain’s Supreme Court ruled in Pernod’s favor in February, saying Bacardi had no claim to the Havana Club name in that country.

Pernod Ricard fell 2.64 cents, or 4 percent, to 64.2 euros in Paris trading. Bacardi’s shares don’t trade publicly.

London-based Diageo Plc is the world’s largest distiller.

The appeal is Pernod Ricard USA LLC v. Bacardi USA Inc., 10-2354, 3rd U.S. Circuit Court of Appeals (Philadelphia). The Delaware case is Pernod Ricard USA LLC v. Bacardi USA Inc., 06- cv-505, U.S. District Court, District of Delaware (Wilmington).

Pernod Ricard Loses Appeals Court Ruling in Havana Club Trademark Dispute

March 29, 2011 | By Susan Decker | Bloomberg

Pernod Ricard SA, the world’s second-biggest liquor maker, lost a U.S. court ruling in its decades-long battle with Bacardi Ltd. over the right to use the name Havana Club on rum in the American market.

The U.S. Court of Appeals in Washington ruled today that the U.S. Treasury Department’s Office of Foreign Assets Control was correct when it refused to let a Cuban state-owned group renew its U.S. trademark on the Havana Club name because of a 1998 law that barred renewal of certain Cuban trademarks.

Pernod Ricard sells Havana Club throughout the world except in the U.S. under a 1993 venture with Cuba’s state-owned Cubaexport. It has been fighting with Bacardi over rights to the name in the U.S. since 1994, when Bacardi applied for a U.S. trademark on Havana Club. The U.S. Patent and Trademark Office rejected Bacardi’s request in part because of Cubaexport already had a trademark.

At stake is Pernod’s future use of an historic brand name in the world’s second-largest market for rum should the U.S. embargo on Cuban goods be lifted. U.S. consumers buy about 17 percent of the world’s rum, second only to India’s 29 percent, according to the London-based industry research firm International Wine and Spirit Research.

“We will appeal,” Ian Fitzsimons, Pernod’s general counsel, said in a telephone interview. “We’re encouraged that it was only a decision by a 2-1 majority. We were particularly encouraged by the dissenting opinion.”

Read the rest of the story starting at Cuban Trademarks.

Shortly after, Cuba condemned this decision with this statement: The ruling, that passed 2 votes against one, was based on the Section 211 of the Omnibus Appropriations Act of 1998, which establishes that no US court will recognize any assertion of rights on a “confiscated” business or trademark. This section was drafted and presented to a US Senate Judiciary Subcommittee on Intellectual Property by former Assistant Secretary of State for the Western Hemisphere Otto Reich, who was advising Bacardi at that time, when this company was under litigation in New York for using illegally the trademark.

“This prohibition reinforces the US economic, financial and commercial blockade the United States has kept on Cuba for five decades” said Cuba Ron SA Corporation president Juan Gonzalez Escalona. He said Cubaexport had registered Havana Club trademark in the United States in 1976 and gave the French beverage giant Pernod Ricard the rights to commercialize it throughout the world. The US government’s goal is to prevent Cuba from having a commercial presence within its territory, in which 17 percent of the world’s production of Premium rums is consumed. America.

Bacardi Continues Legal Actions to Protect Its Havana Club Rum Trademark Rights in Spain

March 15, 2011 | MFRTech.com | From Bacardi press release no longer available

Bacardi Limited, the largest privately held spirits company in the world, continues to pursue all available legal options to protect its legitimate ownership and trademark rights to the Havana Club brand in Spain.

In a brief filed with the High Court earlier this month, Bacardi Limited asked the Spanish Supreme Court for clarification of some aspects of its ruling where the High Court recognized the respect of Spanish law for fundamental rights violated by an expropriation without compensation. While the Court clarified its interpretation of some of the technical aspects in the initial ruling, Bacardi remains focused on the remaining legal options available.

On February 3 2011, the High Court of Spain released its decision that the transfer of the trademark registration of Havana Club rum in Spain by Cuba and its partners was not consistent with Spanish public law. The Spanish Court ruled that Havana Club Holdings “does not deserve to be considered a good faith third party purchaser of the Spanish trademark of Havana Club,” and noted that the company Jose Arechabala, S.A. (and Bacardi as its legal successor) was illegally deprived in Spain of the Spanish trademark registration for Havana Club. The Court however did not restore the Spanish trademark registration to Bacardi solely on the grounds of a technicality involving the statute of limitations applied to the claim.

It is critical to note that Spain’s High Court declared that Spanish law does not recognize in Spain the validity of the transfers to Cuba and its partners of the Spanish Havana Club trademark registration on the basis of the confiscation of Havana Club ordered by the Cuban State in 1960.

Bacardi will continue to defend its fundamental rights against expropriation having purchased the trademark rights in Spain from the original legal owners, creators and proprietors of the brand.

Bacardi has won all U.S. court cases relating to the rights to use the HAVANA CLUB brand, up to the U.S. Supreme Court.

About Bacardi Limited

Bacardi Limited is the largest privately held spirits company in the world and produces and markets a variety of internationally-recognized spirits and wines. The Bacardi Limited brand portfolio consists of more than 200 brands and labels, including some of the world’s favorite and best-known products: BACARDI® rum, the world’s favorite and best-selling premium rum as well as the world’s most awarded rum; GREY GOOSE® vodka, the world-leader in super premium vodka; DEWAR’S® Blended Scotch whisky, the number-one selling blended Scotch whisky in the United States; BOMBAY SAPPHIRE® gin, the top-valued and fastest-growing premium gin in the world; MARTINI® vermouth and sparkling wines, the world-leader in vermouth; CAZADORES® 100% blue agave tequila, the number-one premium tequila in Mexico and a top-selling premium tequila in the United States; and other leading and emerging brands.

Bacardi was founded in Santiago de Cuba, February 4, 1862, and currently employs more than 6,000 people, manufactures its brands at 27 facilities in 16 countries on four continents, and sells in more than 100 markets globally. Bacardi Limited refers to the Bacardi group of companies, including Bacardi International Limited.

xcv

Spain Court Rules in Favor of Pernod Ricard

February 2, 2011 | Rob Sequin | Havana Journal

Pernod Ricard SA is reporting that Spain's Supreme Court has ruled in favor of Pernod Ricard's long-running trademark dispute with rival Bacardi over the rights to the Cuban rum's trademark "Havana Club".

This is the third time that Spanish courts have rejected Bacardi's challenges against its ownership of the famous Havana Club rum brand.

Pernod sells well over three million cases of Havana Club rum in 124 countries every year through a joint venture with the Cuban government that began in 1993. Pernod Ricard's Havana Club rum cannot be sold in the United States due to the long standing US trade embargo against Cuba but Bacardi can sell their "brand" of Havana Club rum in the US since it is made in Puerto Rico.

Bacardi bought their "Havana Club" trademark for US sales from the Arechabala family, the original makers of Havana Club, in 1994. The company started making it's version of Havana Club in 2006 but sales are not known since distribution is extremely limited.

Fidel Castro nationalized the Havana Club and Bacardi manufacturing plants shortly after he came to power in 1959. Bacardi moved operations to Puerto Rico shortly after. The Cuban government took over the Arechabala family rum business.

Bacardi did win a ruling in the US in 2010 when Delaware US District Judge Sue Robinson denied Pernod's request for an injunction to bar Bacardi from selling rum under the Havana Club brand name.

It has not been announced if Bacardi will file an appeal. We will continue to cover this "dispute" even though it is clear that Havana Club is a Cuban rum is has been and continues to be made in Cuba.

Pernod Ricard owns HavanaClub.com while Bacardi owns HavanaClubUS.com

Update: That's why running this site is so interesting. By the end of the day, Bacardi issues a press release stating that the company is encouraged since the court ruled against Bacardi on what it is calling a "technicality".

I wonder, should Bacardi someday win this Havana Club rum trademark dispute, will they file a claim to take the HavanaClub.com domain name?

Cuban Havana Club Rum Sales Rising

October 10, 2010 | By Nelson Acosta, Reuters

Sales of Cuba's trademark Havana Club rum are expected to rise about nine per cent this year to 3.7 million cases, the head of the Cuban-French joint venture producing the liquor said on Tuesday.

The increase follows a decline of three per cent in 2009 due to the global financial crisis, said Marc Beuve-Mery, head of Havana Club International, jointly owned by Cuba and liquor giant Pernod Ricard. "Sales are rebounding. I have no doubt we will add another 300,000 cases or more, rising to 3.6 million or 3.7 million cases, a record number for the company," he said in a news briefing.

Cuban-made Havana Club is sold in 124 countries, not including the United States due to the 48-year-old U.S. trade embargo against the Communist-led island.

If the embargo is lifted, it will open a big new market just 90 miles (145 kilo-metres) away, said Beuve-Mery.

"The United States represents 40 per cent of the global market for rum," he said. "There's no doubt that if we had access to that 40 per cent it would have a tremendous impact on sales."

END

No doubt that Barcardi would like to have a say in that!

Pernod loses lawsuit on Bacardi's Havana Club rum

April 6, 2010 | By Jonathan Stempel | Reuters

A U.S. judge rejected a lawsuit by Pernod Ricard SA to stop rival Bacardi Ltd from selling "Havana Club" branded rum in the United States.

Pernod is likely to appeal the ruling, the latest legal twist in a decades-long trademark dispute.

Both companies sell rum under the Havana Club name; Pernod outside the United States and Bacardi within it.

Tuesday's ruling by U.S. District Judge Sue Robinson in Wilmington, Delaware is the latest in more than 13 years of U.S. litigation between the companies over which company controls the trademarked name.

In its 2006 lawsuit filed in Wilmington, Delaware federal court, Pernod Ricard USA LLC claimed Bacardi USA Inc had no right to use the Havana Club trademark, where it had begun in Florida selling rum under that name.

Pernod, which sold 3.4 million cases of Havana Club during its last fiscal year, also accused Bacardi of false advertising by misleading consumers into believing that its rum is made in Cuba, as Pernod's is, when in fact it is made in Puerto Rico.

But Robinson concluded that Bacardi's rum has a Cuban heritage, having derived from a family recipe first used in that country around 1930, roughly three decades before Fidel Castro took power.

In her 22-page ruling, Robinson also found that because Bacardi's labels "truthfully (and prominently)" show that its rum is "distilled and crafted in Puerto Rico," its labeling is neither false nor misleading.

Pernod showed "no evidence that today's Havana Club rum product differs from the original pre-revolutionary Cuban rum in any significant respect," Robinson wrote. "As the expression goes, 'if it looks like a duck, swims like a duck and quacks like a duck, then it probably is a duck."

Vincent Palladino, a partner at Ropes & Gray LLP in New York representing Pernod, said, "We are very disappointed in the ruling. We believe the judge committed fundamental errors on the law, and in all likelihood we will be appealing."

A Bacardi spokeswoman had no immediate comment, saying the privately held company had yet to review the ruling.

According to the ruling, Havana Club rum was developed by the Arechabala family in Cuba, whose assets were seized by Castro's government in 1960.

By the mid-1990s, a Cuban company had partnered with Pernod to export Cuban-made run under the Havana Club brand, except to the United States because of a U.S. trade embargo.

Bacardi, meanwhile, has said it bought the rights to the Havana Club trademark and remaining rum assets still owned by the Arechabala family in 1997.

The only Havana Club-branded rum sold in the United States is Bacardi's, Robinson said.

Pernod Ricard USA is based in Purchase, New York, and Bacardi USA in Miami.

Pernod Ricard USA Response by Press Release

Pernod Ricard USA is disappointed that the trial court did not agree with rulings of the U.S. Patent and Trademark Office, which found that Havana is well-known for rum and thus that using the name Havana Club for a non-Cuban rum would mislead consumers.

Pernod Ricard USA even submitted a survey to the court showing that consumers are deceived into believing that Bacardi's Havana Club rum comes from Cuba. The Court did not consider the survey results because the Court concluded, incorrectly in our view, that Bacardi was entitled to state that it uses the Arechabala formula to make its rum. In fact, Bacardi's rum comes from Puerto Rico.

Because Pernod Ricard USA believes that this decision is legally and factually incorrect, and that the continued sale of Puerto Rican rum under the Havana Club name would deceive consumers, the company intends to appeal this decision to the United States Court of Appeals for the Third Circuit.

Bacardi's fight to retain Havana Club trademark

March 3, 2010 | BY LESLEY CLARK | Miami Herald

A years-long battle over the rights to a coveted brand of rum returned to Capitol Hill Wednesday as Miami-based Bacardi urged a House committee not to repeal a 1998 provision that gave it the U.S. rights to the name.

The provision -- better known as Section 211 -- has been under fire from the World Trade Organization, which in 2001 ordered the United States to revise the law.

Bills have been introduced that seek to satisfy WTO rules and would tweak the provision, but critics say the entire provision should be scrapped because it benefits a single company and could hurt the ability of other U.S. companies to protect their trademarks.

``In order to live up to our treaty obligations, and indeed honor our reputation and history of leadership when it comes to defending intellectual property rights and the rule of law,'' the provision should be repealed, Mark Esper, vice president of the U.S. Chamber of Commerce's Global Intellectual Property Center, told the House Judiciary Committee.

But Bruce Lehman, a former assistant secretary of commerce and expert counsel for Bacardi, told lawmakers that the provision is ``easily correctable'' and that repealing it would ``send a terrible signal to those throughout the world who wish to devalue intellectual property rights.''

At issue is the right to the Havana Club name. Bacardi says it bought the rights to the name in 1997 from the rightful owner, the Arechabala family, who had the trademark seized from them without compensation when Fidel Castro took power in Cuba.

But Cubaexport, a Cuban government company that partners with the French liquor giant Pernod Ricard, argues it has title. It sells rum under the Havana Club name in Cuba and around the world -- but not in the United States because of the trade embargo against Cuba.

The tussle dates back more than a decade: Bacardi scored a major victory when former Florida Republican Sen. Connie Mack tweaked a spending bill to include language that essentially grants the company the U.S. rights to the name by preventing U.S. courts from enforcing trademarks confiscated by the Cuban government.

But after the French government complained, the World Trade Organization objected. The latest legislation, sponsored by Rep. Debbie Wasserman Schultz, D-Weston, is aimed at addressing WTO rules by not applying solely to Cuban firms.

Committee chairman John Conyers, D-Michigan, acknowledged the history of the controversy as he opened the hearing.

``This is a fascinating subject,'' he said, noting it spans Castro's rise to power and more recently entangled former House Speaker Tom DeLay of Texas, who dismissed accusations from critics that he accepted a $20,000 contribution from Bacardi to one of his political action committees in exchange for supporting its position.

Lehman told lawmakers that opponents of the embargo against Cuba have seized on the issue. The bill that would do away with the Bacardi provision is sponsored by Rep. Charles Rangel, D-New York, who supports travel and trade with Cuba.

``The debate on the embargo centers on whether it helps or hinders Cuba's transition to a free-market economy,'' Lehman said in prepared remarks to the committee. ``This goal is not advanced by giving effect to Cuban confiscatory measures in the United States.''

Excerpted from Guardian.co.uk

Cuba registered the Havana Club brand name in the US during the 1970s, and has been selling Havana Club rum abroad through international partnerships since then.

Havana Club rum sells 3.4 million cases each year through a deal with the French drinks giant Pernod Ricard. But in 1996 Bermuda-based Bacardi won a separate 10-year legal battle that allowed it to start selling in the US its own Havana Club branded rum, produced in Puerto Rico.

"Havana Club is not an asset of the Cuban government," said Bacardi spokeswoman Patricia O'Neal, who cited a 1998 federal law, currently the subject of an appeal, banning the renewal of trademarks by nationalized Cuban companies.

Trademark wars: US goods carry famous Cuba brands

August 29, 2009 | By WILL WEISSERT and MICHAEL FELBERBAUM | AP

Cuban rum maestro Jose Navarro's taste buds sing when he sips Havana Club, the sweet spirit distilled in this farming town south of the capital.

"It has to be Cuban," said Navarro, the oldest of the island's nine certified rum experts. "Havana Club can't exist anywhere else."

But another Havana Club does exist, one made by Bermuda-based rum giant Bacardi Ltd.

Washington's 47-year-old trade embargo has kept Cuban products out of the U.S. — but hasn't prevented companies from using the communist island's brand names.

As the U.S. and Cuba consider better ties, such trademark issues would have be settled before any easing of the embargo. The fight between Bacardi and the Cuban government for the Havana Club name already has played out in the U.S. courts and Congress for more than a decade — and is now before Spain's high court.

But the battles are about so much more than brand names. They are charged with 50 years of emotion over Fidel Castro's 1959 revolution and expropriation of private companies as he implemented socialism. They are also rooted in the future as U.S. corporations face the specter of new competition from Cuban products, which may carry a special allure after being banned for nearly a half century.

Bacardi's Havana Club is an 80-proof rum that has sold in Florida since 2006, and sales have been so strong, it's thinking of expanding the label to other states, said spokeswoman Patricia M. Neal.

Even though Cuba's Havana Club rum can't be sold in the U.S., the Cuban government still sued Bacardi for using the name.

Bacardi argues it owns the name because the original Havana Club was expropriated by Castro from its Cuban producers, the Arechabala family, who went into exile. Bacardi bought the name and recipe from the Arechabalas in 1997.

Cuba says it registered the Havana Club trademark in the U.S. in 1976 after the Arechabalas let their claim on it expire. It has sold the rum internationally since 1993 in a joint partnership with French spirits consortium Pernod Ricard.

So far the U.S. courts have sided with Bacardi based on a 1998 federal law that prevents the registration or renewal of U.S. trademarks tied to companies nationalized by the Cuban government. Cuba has appealed its most recent case to the U.S. District Court of Appeals in Washington.

Meanwhile, Cuba's Havana Club is winning abroad. A Bacardi suit filed in a Spanish court against the Cuban government and Pernod Ricard over the trademark in that country was thrown out in 2007. Bacardi, too, has appealed, and the case is before the Spanish Supreme Court.

The true argument is over who can claim to produce authentic Cuban rum — especially if the country opens up to global commerce.

Bacardi, a family-owned spirits conglomerate founded in Santiago, Cuba, in 1862, pioneered the light, dry smoothness Cuban rum is now famous for, devising a charcoal-filter system and aging in oak barrels for added sweetness.

But the Bacardis joined the fiercely anti-Castro exile community in Miami after Castro nationalized the company in 1960. Havana Club, like all Bacardi rums, is made in Puerto Rico — and says so on the bottle.

Still, Neal says her company's Havana Club transports consumers "back to the time it was created: sultry nights, classy nightclubs, and pulsating Latin music, enjoyed by locals and visitors alike."

Cuba and Pernod Ricard spent $70 million to rehabilitate a Havana Club distillery specializing in darker, higher quality anejo rum in San Jose de Las Lajas.

"If I have a recipe, am I producing a Cuban rum? No. Cuban rum is not a recipe. It's an expression of an entire culture," said Navarro, while scrutinizing stacks of barrels filled with aging rum.

Even without the U.S. market — 40 percent of world rum drinkers — Cuban Havana Club has seen its annual sales soar 13 percent to 3.4 million cases. Bacardi's more than 200 brands and labels sell 20 million cases in 150 countries every year.

It's a debate that may ultimately be decided by consumers.

John Verburg, manager at Cafe Habana in Ann Arbor, Michigan, uses Barcardi to mix his mojitos, the famous Cuban cocktail of rum, sugar and mint. But he's asked all the time when he will get rum "authentically from Cuba."

"I don't know if people are salivating yet," Verburg said, "but it could be something very exciting."

Felberbaum reported from Richmond. Associated Press Writer Andrea Rodriguez contributed to this report from Havana.

July 29, 2009

The family of Bobby Fuller, a man who was executed for invading Cuba, has won a $100 million lawsuit against the Cuban government for wrongful death due to a terrorist act. Yes, you read that right but that's not what this entry is about. The family is requesting that their judge "order the sale of Havana Club, Cohiba and 12 other Cuban trademarks to help satisfy their award".

From these excerpts from the article Shameless family of Bobby Fuller uses US legal system for Cuba money grab

"For one thing, the value of the trademarks registered in the United States is unclear. Cuban-made products cannot be sold here. The trademarks’ highest value would be based on a post-embargo marketplace—a possibility that appears closer under the Obama administration.

It is also not clear whether the three Cuban entities can claim ownership of their 14 trademarks in dispute. A 1998 U.S. law prevents Cuban trademark owners from renewing their trademarks in the United States if they were confiscated along with companies nationalized by the Cuban government."

END

So, the controversy rages over who actually owns the Cohiba and Havana Club rum trademarks. Continue to visit this site for more information as we find it.

July 23, 2009

Bacardi Limited, the largest privately held spirits company in the world, today announced the Supreme Court of Spain has decided to hear its appeal in the case involving trademark rights to the Havana Club rum brand. The decision by the Spanish Supreme Court is a critically important and successful step in the case, as the Court is highly selective in what cases it reviews.

Bacardi, Jose Arechabala, S.A. and members of the Arechabala family sued Havana Club Holding, Havana Rum and Liquors, S.A., Cubaexport, and the Republic of Cuba in 1999 in Madrid’s Court of 1st Instance No. 54 to invalidate the Cuban entities’ transfer of the registration of the Havana Club trademark in Spain from Jose Arechabala, S.A.

Bacardi owns the rights to the Havana Club rum brand, having purchased the trademark from the original legal owners, creators and proprietors of the brand. The Arechabala family created Havana Club rum in 1935 in Cuba and subsequently sold their rum in Spain and other countries. In 1959, the Arechabala’s Havana Club brand and other assets were confiscated by the Cuban government without compensation. In the early 1990s, Cuba signed an agreement with French-based Pernod Ricard to exploit the confiscated brand globally through a joint-venture called Havana Club Holding.

April 22, 2009

ACN - Representatives from ten countries and from the European Community reiterated in Geneva their call for the United States to observe the ruling of the World Trade Organization (WTO) relevant to Cuban claims for its rights over the Havana Club trademark.

The issue is related to Washington's persistence of Section 211, which permits the Bacardi company to takeover the Cuban rum brand Havana Club, in spite of having being disqualified by the WTO Solution of Differences Court seven years ago.

Jorge Ferrer, secretary of the Cuban mission in Geneva said on Monday at a meeting of the organization that the situation has not changed and that this year's reports by the defendant have only made an ambiguous reference to the topic, reported PL.

The diplomat explained that at the end of March, according to media outlets, an American federal judge rejected a demand made by the island's CUBAEXPORT, which is the legitimate owner of the Havana Club brand, against the Foreign Assets Control Office of the US Treasury Department.

Five years after the promulgation of Section 211, it was considered as a violation of the fundamental principles of the Paris Convention and the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights.

The derogation of that Section has been demanded several times at the WTO headquarters.

This year, the US attitude was questioned as well by the European Community (representing 27 members of the continental bloc), and by China, Brazil, Ecuador, Venezuela, India, Costa Rica, Thailand, Mexico and Vietnam.

In his statements, Ecuador's representative said the dispute is the oldest pending issue of the organization.

March 30, 2009

By Nedra Pickler | The Associated Press - A federal judge dismissed a Cuban lawsuit Monday over the termination of U.S. trademark rights for its Havana Club rum, a victory for Bacardi's effort to take over the brand name as its own in the United States.

The dispute dates back decades and is entangled in property seizures during the Cuban revolution, the trade embargo with the island nation and U.S. trademark law.

Cuba's Havana Club is not sold in the United States because of the trade embargo, but the company got a U.S. trademark for the name in 1976 for future opportunities in case the embargo is lifted. French spirits producer Pernod Ricard has partnered with the Cuban government to sell Cuba's Havana Club internationally and has successfully driven up sales around the world outside the United States.

Tom Gjelten, an NPR reporter and author of a book on the dispute, said Bacardi realizes it's possible the Cuba trade embargo could be lifted and Cuba's Havana Club could become a threat to its rum sales in the United States.

Gjelten said Bacardi shrewdly bolstered its case by getting Congress to pass a law in 1998 that prevents the registration or renewal of trademarks connected with companies nationalized by the Cuban government.

Cubaexport, Cuba's state-owned export enterprise, filed the lawsuit three years ago against the U.S. Treasury Department's Office of Foreign Asset Control after the agency refused to allow renewal of its trademark.

U.S. District Judge Royce Lamberth cited that law Monday in his decision to throw out Cubaexport's case.

"What this decision seems to be is one more nail in the coffin for Pernod Ricard trying to hold onto its use of the Havana Club trademark in the United States," said Gjelten, author of "Bacardi and the Long Fight for Cuba."

Pernod Ricard referred requests for comment to its attorneys, who did not respond to messages left by The Associated Press.

Bacardi fought to have Cuba's trademark canceled and is now selling its own Havana Club rum in limited quantities in Florida, made in Puerto Rico so it doesn't violate the trade embargo. Bacardi has an application pending to register the mark in its own name.

As Bacardi explains it, Havana Club rum was developed in 1935 by a family owned Cuban company, Jose Arechabala SA. When Fidel Castro rose to power, the family's plant and trademark were seized and the Cuban government began producing rum under the Havana Club label. Bacardi bought the original recipe and the Havana Club name from the Arechabala family in 1994.

"We are the legitimate owners of the brand," said Patricia M. Neal, spokeswoman for Bacardi USA Inc. "We're thrilled that once again the U.S. courts have upheld these laws."

March 3, 2009

By Phil Milford | Bloomberg - A lawyer for the U.S. unit of Pernod Ricard SA, the world’s second-largest liquor maker, told a judge that Bacardi USA’s use of the Havana Club brand misleadingly suggests its rum is made in Cuba, as a trial began today.

A lawyer representing Bermuda-based Bacardi Ltd.’s subsidiary countered that the liquor it sells is clearly labeled “Puerto Rican Rum,” and that Pernod’s false-advertising claim is aimed at stifling competition.

“Havana Club was the subject of a consumer survey which concluded 18 percent surveyed were misled that the rum was made in Cuba,” Pernod lawyer Eric Hubbard told U.S. District Judge Sue L. Robinson, who is trying the case without a jury in Wilmington, Delaware.

Pernod sued in 2006 alleging “false representation of geographic origin” by closely held Bacardi, according to court papers. Bacardi claims Paris-based Pernod sued in part because it fears lost sales for its Malibu-brand rum.

“Pernod must show that it suffered damages from alleged misrepresentations made by the Bacardi product,” Bacardi lawyer William Golden Jr. told the judge. “We say there is no such harm.”

Golden said that Pernod’s survey is flawed because of the “convoluted” nature of the questions. He told Robinson that Pernod is motivated by the prospect of bringing Cuban rum into the U.S. if trade restrictions against Cuba are ever lifted.

Cuban Trademark

“When democracy is restored” and the U.S. trade embargo against Cuba is lifted, “Bacardi intends to pursue its claims to the Havana Club mark in the appropriate Cuban tribunal,” Bacardi lawyers said in pre-trial filings.

The trial is the latest round in a protracted dispute between Pernod and Bacardi over the Havana Club brand. In 2007, Pernod won an order barring Bacardi from using the trademark in Spain.

In 2006, the U.S. Patent and Trademark Office prohibited Pernod from selling its Havana Club rum in the U.S. Pernod at the time sold the rum in more than 100 countries under a 1994 joint venture with Cuba.

Pernod Ricard, with $9.66 billion in sales last fiscal year, fell 41.5 cents to 41.45 euros in Paris trading today. Pernod’s largest competitor is London-based Diageo Plc.

The case is Pernod Ricard USA LLC v. Bacardi U.S.A. Inc., 06CV505, U.S. District Court, District of Delaware (Wilmington).

To contact the reporter on this story: Phil Milford in Wilmington, Delaware, at pmilford@bloomberg.net