Havana Club's abuse is dangerous for trademark law

Havana Club is a rum brand, created by José Arechabala in 1878. This alcoholic beverage made in Cuba is named after the nightclub Havana. Following the Cuban revolution of 1959, the Cuban government nationalized the rum company and took over the Havana Club brand.  

Havana Club and the US blockade

Since 1966, the Cuban State has registered the trademark Havana Club in 80 countries, and is starting to export it to the Eastern bloc. In 1976, the government also registers the trademark in the United States with the USPTO. (the American Trademark Office). But the brand's success exploded in 1993, following an agreement between the Cuban government and Pernod Ricard. From that date on, Havana Club is exported all over the world, except to the United States. Indeed, following the embargo put in place by the US government against Cuba in 1962, Pernod Ricard cannot sell its rum in the USA. However, the Bacardi group, which was banned from Cuba during the revolution, managed to market a different rum in the United States, but also under the name of Havana Club. In 1994, the Puerto Rican group obtained the commercial rights to the original recipe from the Arechabala family. As rum is produced in Puerto Rico, Bacardi circumvents the American embargo.

The legal dispute over the Havana Club name

As the US market represents 40% of the world rum business, the stakes are high. In 1995, a real legal war began between Pernod Ricard and Bacardi over ownership of the name "Pernod Ricard". Havana Club.

Bacardi's first victories

Bacardi's initiating the action. The Group is attacking the trademark registration carried out in 1976, which had been transferred to Pernod Ricard. Bacardi requests the cancellation of the registration Havana Clubon the grounds that it is fraudulent. The USPTO rejects this request. Bacardi appeals, arguing in particular that he makes his rum from the original recipe. Furthermore, the group has the endorsement of the American parliamentarians in Florida. However, this state includes a large community of Cuban exiles who are sensitive to the Bacardi situation. In 1998, the group will benefit from a new law that prevents the registration in the United States of trademarks belonging to countries under embargo. This law was passed under pressure from lobbies and is nicknamed the "Bacardi Bill". Bacardi therefore continues to market a rum Havana Club in the United States. Despite these difficulties, Pernod Ricard continues to look after its interests.

Pernod Ricard sets the course for the future

The French group decides to preserve its rights to Havana Club for the end of the embargo. Without it, he won't be able to distribute his rum on American territory. Consequently, Pernod Ricard is renewing its application for a licence from the OFAC (Office of Foreign Assets Control) in 2006. The licence granted by the OFAC is mandatory because Havana Club is a rum made in Cuba with Cuban ingredients. But the FOCA, taking note of the Bacardi Bill, refuses to renew the licence. Pernod Ricard therefore brought a case before the Supreme Court to seek the annulment of the licence refusal. In 2012, US Supreme Court refuses to grant Pernod Ricard's claims. Pernod Ricard then announced theregistration of the Havanista trademark with the USPTO. Entirely produced and bottled in Cuba, this rum is exclusively intended for the American market.  

The easing of the embargo and its effects on the Havana Club brand

At the end of 2014, relations between Cuba and the United States are warming up. The USA agrees to facilitate trade with Cuba, particularly for the purchase of Cuban cigars and rum. As a result of this flexibility, Pernod Ricard has obtained the renewal of the brand Havana Club in the United States until January 27, 2026. Following this renewal, the FOCA in turn issues the long-awaited licence on 29 February 2016. The French group cannot yet export its rum to the USA, but it prefers to anticipate. However, Bacardi has not yet said his last word: the legal battle over rum. Havana Club continues. To find out all about filing, renewing and defending your trademark, in France and abroad, our team is at your disposal.   Alcohol abuse is dangerous for your health; consume in moderation.