U.S. and Cuba Clash over Havana Club Trademark
In Cuba, and 120 other countries around the world, Havana Club rum is a symbol of Cuba. Made in a joint venture between the Cuban government and French distilled beverage company Pernod Ricard, Havana Club is kept out of the US by the trade embargo with Cuba. Instead, in the U.S. you can buy Bacardi’s Havana Club, a rum made in Puerto Rico from the original recipe for the Cuban Havana Club. Bacardi purchased the recipe from the family of the original distiller, who immigrated to the United States after their company was nationalized in the 1959 Cuban Revolution.
Along with the recipe, Bacardi bought the global rights to the trademark in 1997, presumably hoping it would support their 1994 application for a trademark in the U.S. However, the family had let the registration lapse, and the government-controlled Cubaexport held the trademark at the time. Not to be deterred, Bacardi lobbied for legislation, passed in 1998, that made it harder for companies nationalized by Cuba to enforce and renew their trademarks. Among the provisions of the legislation was the requirement that such companies have the consent of the original owner of a mark or their successor in interest to get approval for registration or renewal.
Accordingly, when Cubaexport applied for a license to pay the fees to renew its Havana Club trademark, the Department of Treasury rejected its application. Cubaexport sued the Department, claiming that denying the license violated the Administrative Procedure Act and the due process and takings clauses of the Constitution. Unfortunately for Cubaexport, the D.C. District Court and the D.C. Circuit Court found that the purpose and the language of the legislation were clear, and that it could be applied retroactively. On May 14, the Supreme Court denied cert; on the 17th, the Cuban Ministry of Foreign Affairs denounced the actions of the U.S. government. Bacardi remains confident that the Patent and Trademark Office will cancel Cubaexport’s registration and approve its own application.
Although it will be unable to use Havana Club in the U.S., Pernod Ricard has already got a contingency plan in place. If the Cuban embargo is lifted, it plans to market Cuban rum under the name “Havanista” – a name it has already trademarked.