Friday, October 7, 2022

Bacardi Advances Havana Club Trademark Case in US District Court

By on March 15, 2016

SAN JUAN – In an ongoing effort to defend its ownership of the Havana Club rum brand and trademark in the United States, Bacardi, the largest privately held spirits company in the world, has filed an amended complaint with the U.S. District Court for the District of Columbia. The filing amends the original complaint Bacardi filed in March 2004 under the Lanham Act (also known as the Trademark Act of 1946), the federal statute that governs trademarks, service marks and unfair competition. The defendants in the complaint are Cubaexport, an agency of the Cuban government, and Havana Club Holding S.A., the joint venture company between the Government of Cuba and Pernod Ricard – the second largest spirits company in the world.

With this filing, Bacardi asks the court for the cancellation of the Cuban government’s Havana Club trademark registration in the U.S. Patent & Trademark Office (PTO) based on, among other things, “the [Barack Obama] Administration’s fraud in obtaining the original filing.” Bacardi also seeks a declaration that it has common law rights in the mark based on distribution and sales of Havana Club branded products in the United States. According to Bacardi, it obtained the rights to the mark through a lawful and U.S. Office of Foreign Assets Control (OFAC)-licensed transaction with the brand’s original owner and creator José Arechabala S.A.

“We are extremely disappointed to have to resort to using the precious time and resources of the U.S. justice system due to the failure of the U.S. government in following established legal and public policy protecting the rights of those who have suffered confiscations of property,” Rick Wilson, senior vice president for external affairs for Bacardi in the U.S., says in a statement released Tuesday. “A ‘let the courts decide’ mentality is not the way to go when, for decades, the Cuban government and its business partner intentionally and knowingly concealed and misrepresented to the PTO the pertinent facts that have undermined its claims as the lawful owner of the mark in order to deceive the PTO and maintain the registration.”

In Bacardi’s release it says its filing outlines the “elaborate, misleading, fraudulent and deceptive activities employed by the Cuban government and its joint venture partner Pernod Ricard concerning the obtaining, maintenance and renewal of the Havana Club trademark in the U.S.” Among other things, Bacardi states that Section 211 prohibits any U.S. court from recognizing, enforcing or otherwise validating the Cuban government’s assertion of rights in a mark incorporating the words Havana Club because the mark was associated with a business that was “illegally confiscated by the Cuban government in 1960.”

“The United States has a long history of upholding the law and non-recognition of foreign confiscations so we are confident Bacardi will once again prevail in this decades-long matter,” adds Eduardo Sánchez, senior vice president and general counsel for Bacardi. “No company or government should be able to profit from stolen property.”

According to information in Bacardi’s release, on Aug. 3, 2006, the PTO issued an office action that stated that the Cuban government’s registration of the Havana Club mark will be “cancelled / expired.”

“Because cancellation of the registration would provide equivalent relief that was sought in this matter, the D.C. District Court stayed the entire case on May 24, 2007, pending final resolution of the PTO office action. In January of this year, the PTO suddenly and unexpectedly reversed course and permitted the Cuba government to renew its Havana Club registration retroactively. Thus, Bacardi has no choice but to continue its efforts in the D.C. District Court to obtain cancellation of the Cuban government’s registration and protect Bacardi’s rights in the Havana Club mark in the United States,” the release concludes.

 

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