In mid-May the US Supreme Court refused to review what Pernod Ricard said was a “controversial” 2009 decision from the Court of Appeals of the District of Colombia, with the issue coming to ahead given possible easing of a US embargo on Cuban goods in the near future.
This upheld a US Office of Foreign Assets Control (OFAC) decision from 2006, denying the French firm (via Cuban state export body Cubaexport) in its application to trademark the ‘Havana Club’ brand name and sell rum using it in the US.
Asked if Pernod Ricard retained hope that the US government might allow it to renew the Havana Club trademark at a later date, a spokesman told BeverageDaily.com: “We will continue to fight for our legitimate ownership of the trademark in the US and are currently studying all our options.”
Bacardi USA is the chief beneficiary of the Supreme Court decision, where it resumed sales of its own ‘Havana Club’ rum (pictured below) throughout the US in the 1990s, now only sells the rum in Florida, but claims the disputed US name rights and told us it was planning nationwide sales “in the near future”.
Bacardi USA 'applauds' US Supreme Court
Bacardi USA spokeswoman Patricia Neal told BeverageDaily.com that her company “applauds” the U.S. Supreme Court and OFAC for, “upholding the law and denying Cubaexport a license for the renewal of Havana Club Holding’s trademark registration”.
“Bacardi already owns rights for the Havana Club rum mark in the US through use of the mark on sales of rum. The [Jose Arechabala Company] originally sold Havana Club rum in the US in the 1930s and as a successor to the original owners, Bacardi owns the US. rights to the brand,”she added.
The Atechabala family distilled Havana Club rum in Cuba until the 1959 revolution, after which the government seized their assets and signed a JV with Pernod Ricard to market the brand globally, with Cubaexport is responsible for global exports.
However, the trademark dispute aside, the JV has never been able to sell its Cuban in the US due to a wholesale trade embargo imposed on Cuban goods.
Consequently, Bacardi argues its common law ownership of the trademark is based on use, as Neal explained, where US law distinguished between this and Federal name registration – with the Arechabala family and Bacardi the only entities to ever use the ‘Havana Club’ name in the US.
Neal said: “Bacardi filed its federal application to register the Havana Club name in the US. in 1994 in order to obtain the further protections that a federal registration brings. Our application is pending and will be considered by the USPTO and we fully expect that federal registration will be obtained."
Pernod Ricard hopes for Havanista US launch
But after the Supreme Court judgement in May, Havana Club CEO, Jérôme Cottin-Bizonne, said that Pernod Ricard was determined not to miss out on the US rum market (40% of the world sales) given strong demand for authentic Cuban rums, and had registered ‘Havanista’ as a US brand name.
He said: “If some people thought that, through this decision…they would deprive us from expanding our Cuban rum business in the US once the embargo is lifted, this is a clear message that, no, we have been able to register our brand name Havanista at the USPTO and we are ready to commercialise this brand in the US market…”
Pernod Ricard told BeverageDaily.com that Havanista rum would be identical to its Havana Club, noting that the latter name was legally registered by the USPTO in 1976 and renewed in 1996, with renewal refused in 2006 due to the retroactive application of a 1998 law called Section 211.
“Bacardi has not (and never had) Havana Club trademark right registered before the USPTO. It is important to note that all legal instances on all markets Havana Club is distributed on today (over 120) have confirmed the legitimate ownership of the Havana Club trademark by the joint venture,” the spokesman added.