Havana Club Rum
Trademark Dispute News
Pernod Ricard USA LLC v. Bacardi USA Inc, U.S. District Court, District of Delaware, No.
News Articles from June 2012
Moment of truth nears for Havana Club rum war; Cuba could soon lose right to US trademark by
AP - "By mid-June, Cuba could lose all chance of pressing its legal claims against Bacardi, which distributes a
limited quantity of its own Havana Club rum in Florida and says it plans to expand to other states in the near
Hopes Dim on Cuban Oil, Foreign Investment, Havana Club Rum Rights by Anya Landau French of
The Havana Note - "Pernod would likely have argued in court that the new law didn’t apply because the original
owner of the Havana Club label had failed to renew their trademark rights in the U.S. and thus was no longer
considered the original owner, but it never got the chance, since Section 211 forced a Florida court to throw
out the pending suit by Pernod Ricard against Bacardi."
Cuba appeals to USPTO in battle to keep control of Havana Club rum trademark by Ana Radelat
of Cuba News - "An administrative agency action that terminates a Cuban national’s property rights…constitutes a
‘transfer’ that is blocked by the Cuban Assets Control Regulations,” said a letter to USPTO from the Castro
government’s New York-based attorneys, Debevois & Plimpton LLP.
The lawyers argue that cancellation of the Havana Club brand should remain suspended until the
embargo is abolished."
From July 2012 Havana Club rum dispute isn’t over yet by Mimi Whitefield of the Miami Herald - The
litigation between Bacardi and Cuba over the use of the Havana Club trademark in the U.S. market is over, but
Cuba is still trying to hold on to the name.
Pernod Ricard Gives Up Fight For Havana Club Rum Trademark in US
May 14, 2012
Looks like Pernod Ricard has given up their fight for the Havana Club trademark in the United
States. The Havana Journal writes
Pernod Ricard gives up Havana Club rum brand in the US, goes with Havanista brand.
Pernod Ricard of France announced that is will give up its Havana Club rum brand for the US market
and that it has registered the Havanista rum brand in the United States. It will launch the brand if/when the US
Embargo on Cuban imports is lifted.
I don't expect any other Havana Club trademark dispute news but I will leave this site up for
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
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.
“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
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
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
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
“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
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
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
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
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
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
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
"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."
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
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
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
Committee chairman John Conyers, D-Michigan, acknowledged the history of the controversy as he opened the
``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
``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
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
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
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
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
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
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
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
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
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."
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
Spain Supreme Court will hear Bacardi's trademark appeal in Havana Club rum dispute
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,
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
April 22, 2009
Cuba claims right for Havana Club trademark, again
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
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
Cuban rum lawsuit thrown out
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
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
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
Pernod Ricard, Bacardi Start Trial Over "Havana Club"
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
“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
“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
To contact the reporter on this story: Phil Milford in Wilmington, Delaware, at firstname.lastname@example.org