Bacardi asks court to remove Havana Club mark

Bacardi has upped its battle with Pernod Ricard and the Cuban government, calling on a US court to strike their joint venture’s Havana Club rum brand from the register.

Bacardi have been selling Havana Club in the US since 1994, while the brand name has been sold elsewhere by Pernod Ricard (Photo: Wiki)

In its latest court filing, Bacardi argues that Pernod Ricard and the Cuban agency Cubaexport engaged in “elaborate, misleading, fraudulent and deceptive activities concerning the obtaining, maintenance and renewal of the Havana Club trademark in the US”.

A senior Bacardi official has also alleged that Pernod Ricard, the world’s second-largest spirits producer, “intentionally and knowingly” hid “pertinent facts” that undermine its claim to the Havana Club trademark in the US.

It is the latest move taken by Bacardi since US officials in January extended Pernod Ricard and Cubaexport’s trademark over Havana Club to 2026, forcing the brand dispute into the courts.

Following a thaw in relations with communist Cuba, the US Patent and Trademark Office ruled that Havana Club Holding SA, the company jointly owned by Cubaexport and Pernod Ricard, has the sole right over the Havana Club brand to 2026.

The ruling allows the Cuban made rum brand – which is sold in all other markets – to enter the US market, replacing Bacardi’s Puerto Rican rum of the same name. Analysts suggest that could cost Bacardi up to 4 million case sales a year.

In a scathing attack, Eduardo Sánchez, senior vice president and general counsel for Bacardi, said: “Following the US government’s failure to uphold the protection of confiscated properties, the US courts will now need to step in and recognise the rights of legitimate owners whose properties have been expropriated.

“No company or government should be able to profit from stolen property”, he added.

Bacardi’s latest court filing updates a static complaint the company made in March 2004 about the existence of the Pernod-owned Havana Club brand.

It reassert’s Bacardi’s claim that Section 211 of the Lanham (Trademark) act 1946 prohibits any US court from “recognising, enforcing or otherwise validating the Cuban government’s assertion of rights in a mark incorporating the words Havana Club”, the company said.

“The mark was associated with a business that was illegally confiscated by the Cuban government in 1960,” Bacardi argues.

Following the PTO ruling in February, Pernod Ricard said that a court settlement was the best way to address the dispute.

“We are confident that Cubaexport, the Cuban entity that owns the U.S. trademark registration for Havana Club rum, will prevail in defending its registration in the pending litigation,” said Ian FitzSimons, General Counsel of Pernod Ricard.

Mr FitzSimons reiterated this view when commenting on the latest development. “Cubaexport has been the registered owner of the Havana Club trademark in the US since 1976, and owns the rights to the Havana Club trademark everywhere it is sold around the world. We look forward to letting the Court decide the case on the merits,” he said.