Bacardi says it’s not over yet in Havana Club trademark battle

Bacardi says it's not over yet in Havana Club trademark battle

Bacardi files FOIA request for documents related to decision allowing
its rival to register trademark
Cubaexport now has the right to use the trademark in the United States
Another 10-year renewal for the trademark is pending

BY MIMI WHITEFIELD
mwhitefield@miamiherald.com

In its long-standing fight with the Cuban government for ownership of
the Havana Club rum trademark, Bacardi has asked to see all the
documents related to the U.S. decision allowing Cubaexport to renew the
trademark for use in the United States.

In mid-January the U.S. Patent and Trademark Office renewed Cubaexport's
registration of the Havana Club trademark. Even though the U.S. embargo
against Cuba prohibits Cuban rum from being sold in the United States,
the more than two-decades long trademark battle is about market share at
a time when the embargo is no longer in effect.

Bacardi, the largest privately held spirits maker in the world, has
claimed ownership of the mark after purchasing the rights to the name
and the original Cuban recipe from the Arechabala family who made the
rum in Cuba before the 1959 revolution. After the family's rum-making
plant was seized and they went into exile, the trademark registration
lapsed in 1973. Three years later, CubaExport registered the trademark
in the United States.

This week Bacardi filed a Freedom of Information Act request with the
U.S. Department of Treasury asking for all documents and communications
from the patent office, the Office of Foreign Assets Control, the State
Department, the White House, the National Security Council, Treasury
and/or any third partners that could shed light on the decision to renew
the Havana Club registration.

"We are filing this Freedom of Information Act request because the
American people have the right to know the truth of how and why this
unprecedented, sudden and silent action was taken by the United States
government to reverse long-standing U.S. and international public policy
and law that protects against the recognition or acceptance of
confiscations of foreign governments," said Eduardo Sánchez, Bacardi's
senior vice president and general counsel.

Bacardi has maintained through numerous court cases that the trademark
was "fraudulently obtained" and deals with a property that had been
illegally confiscated.

After purchasing the name from the Arechabalas, Bacardi began selling
its own Havana Club rum, made in Puerto Rico. It began by distributing
limited quantities in Florida and now also sells the rum in selected
retail stores and high-end bars in four other states to help establish
its ownership rights through use of the brand.

Cubaexport, which distributes Havana Club around the world in
partnership with French spirits maker Pernod Ricard, challenged
Bacardi's use of the name Havana Club, and the case went all the way to
the Supreme Court, which declined to review the case in May 2012.
Bacardi expected the U.S. Patent and Trademark Office to cancel
Cubaexport's right to use the name in the United States, allowing it to
go forward with its registration of the mark.

Since first obtaining the Havana Club trademark, CubaExport has
re-registered the mark in 10-year intervals — that is until 2006.

When Cubaexport tried to get a license from Treasury's Office of Foreign
Assets in 2006 to pay the $500 to renew the Havana Club trademark — a
necessary step because the embargo prohibits most financial transactions
with Cuba — OFAC refused, saying that after consulting with the State
Department, granting the license "would be inconsistent with U.S.
policy." Cubaexport's registration was considered expired.

Now, however, the United States and Cuba have reestablished diplomatic
relations. Although the patent office won't comment on whether that had
any bearing on its decision, Cubaexport got the OFAC license to pay the
fee in January and the next day the trademark was renewed.

Bacardi contends that decision was a violation of Section 211, which
prohibits any trademark actions or payments in connection with a
confiscated business or assets, and "long-standing OFAC policy."

Meanwhile, the registration that Cubaexport obtained only covered the
10-year period from January 2006 until Jan. 27. Cubaexport has filed to
renew the trademark registration for another 10 years. "We filed our
application for renewal before the 27th deadline, which is the
requirement," said Olivier Cavil, a spokesman for Pernod Ricard. "We
expect it to be processed now in the ordinary course."

Source: Bacardi says it's not over yet in Havana Club trademark battle |
Miami Herald -
http://www.miamiherald.com/news/business/international-business/article57948323.html