Bacardi loses latest Havana Club hearing
Bacardi has lost the latest round of its long-running battle over ownership of the Havana Club rum name and its use in the US.
A US Circuit Court of Appeals in Virginia has upheld the decision made by the US Patent and Trademark Office (USPTO) to renew Cuba-owned Cubaexport’s federal “Havana Club” trademark in 2016 despite Bacardi’s objections.
Bacardi said it was “disappointed that the court granted the Cuban government a 10-year grace period for renewing a trademark that was stolen in the first place.”
Confiscated brand
The wrangle harks back to the early days of the Castro regime in Cuba in the 1960s when it confiscated the brand and the name from Jose Arechabala S.A, the founding company.
The Arechabala family moved their production to Puerto Rico and eventually sold the Havana Club marque in 1995 to Bacardi, who have distributed the rum in the US since then.
Meanwhile, a new state company, Cubaexport, continued production in Havana and appointed Pernod Ricard to distribute their Havana Club rum globally. That excluded the US because of the embargo on Cuban goods.
However, in 1976 Cubaexport had successfully registered the brand name in the US, despite not being able to sell there.
This, it claims prevents Bacardi from using the Havana Club name, especially as the rum is not produced in Cuba.
Change of course
Cubaexport tried to renew its US trademark in 2005, but was prevented from doing so after the US Treasury Department’s Office of Foreign Assets Control (OFAC) refused to issue it a licence.
OFAC changed course and issued the licence near the end of the Obama administration, and the USPTO renewed Cubaexport’s trademark in 2016.
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Following this, Bacardi sued the USPTO in a Virginia federal court in 2021, arguing that Cubaexport’s trademark should have expired in 2006.
US District Judge Liam O’Grady dismissed the case in 2022, finding that Bacardi could only challenge the mark through trademark office procedures. The 4th US Circuit Court of Appeals revived the case in 2024.
Latest chapter
US District Judge Leonie Brinkema dismissed the lawsuit again last year and now a three-judge panel has his upheld his ruling.
“The OFAC licence cleared the fog, removing the legal obstacle that had prevented the 2005 transfer from counting as payment,” the appeals court said. “What looked incomplete in 2006 was, by 2016, timely and effective.”
Bacardi claims, however, that Cubaexport’s trademark will expire in a few days’ time and cannot be renewed under a 2024 law that bars US courts and agencies from recognising trademarks confiscated by the Cuban government.
The wrangle is set to continue as both sides fight for a slice of the key US market for rum.
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