Spanish Supreme Court ruled thatHavana Club Holdings, a joint venture between French group Pernod Ricard and Cuba's state-owned Cuba Ron, as the owner of the Cuban brand.
Ian FitzSimons, general counsel for Pernod Ricard welcomed the ruling and said, “This was a blatant attempt by our competitor, Bacardi, to claim rights in a trademark more than 30 years after an unused registration had expired."
Trademark ownership of the brand was first granted to Havana Club Holdings by the Spanish lower court in 2005 and then again on appeal by the Provincial Court of Madrid in 2007.
Claims legal rights
However, Bacardi claims that it legally owns the rights to the Spanish Havana Clubrum brand, having purchased the trademark from the original legal owners, creators and proprietors of the Havana Club rum.
According to Bacardi, the Arechabala family created Havana Club rum in Cuba in 1935 and sold their rum in Spain and other countries. In 1959, the Havana Club brand and other assets were confiscated by the Cuban government without compensation.
Cubaexport, a Cuban government agency, then assigned the trademark to the Pernod joint venture in the early 90s.
“As Bacardi and Jose Arechabala have asserted for the past 12 years, and Spanish courts have not contested, Bacardi legally owns the rights to the Spanish Havana Club rum brand,” said Bacardi.
According to the Bermuda-based company, the 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”.
Bacardi claims that the company Jose Arechabala (and Bacardi as its successor) was illegally deprived in Spain of the Spanish trademark registration for Havana Club.
The company said that the court did not restore the Spanish trademark registration only on the grounds of a technicality. Bacardi said it was therefore encouraged by the court’s ruling and was planning its next steps.
“This decision clearly supports and recognises the rights of the original owners of Havana Club, the Arechabalas and Bacardi, as its rightful successor,” said Séamus McBride, president and CEO of Bacardi.
“Bacardi has and will continue to defend its position in the wake of ongoing and inaccurate allegations by Havana Club Holdings surrounding the legitimacy of Bacardi’s rights and ownership of Havana Club rum,” said the company.
Bacardi has won all US court cases relating to the rights to use the Havana Clubbrand, up to the US Supreme Court.
Most recently in April 2010, a US federal court also recognised that Bacardi “acquired any remaining rights to Havana Club, as well as the recipe from the Arechabala family.”