Bacardi vows to continue Havana Club fight

Bacardi has said it will not give up the fight despite losing its Havana Club rum trademark battle in Spain to rival company Pernod Ricard.

The Spanish Supreme Court this week ruled that Havana Club Holdings, a joint venture between French group Pernod Ricard and Cuba’s state-owned Cuba Ron, is the owner of the Havana Club brand.

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.

However, Bacardi claims that it legally owns the rights to the Spanish Havana Club rum brand, having purchased the trademark from the original legal owners, creators and proprietors of the Havana Club rum.

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."

According to Bacardi, the Arechabala family introduced Havana Club rum in Cuba in 1935 and sold their rum in Spain as well as other countries.

The Cuban government confiscated the Havana Club brand with no compensation for the family in 1959.

The trademark was later assigned to the Pernod Ricard joint venture in the early 1990s by Cuban government agency Cubaexport.

“As Bacardi and José 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 José Arechabala (and Bacardi as its successor) was illegally deprived in Spain of the Spanish trademark registration for Havana Club.

The company said that only a technicality prevented the court from restoring the Spanish trademark registration and was therefore encouraged by the court’s ruling and planning its next move.

“This decision clearly supports and recognises the rights of the original owners of Havana Club, the Arechabala’s 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 Club brand.

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.”

Alan Lodge, 09.02.2011