Bacardi wants a federal court to give the rum company exclusive rights to the Havana Club trademark in the United States and resolve a long-running struggle.
BY ELAINE WALKER
After almost a decade of fighting, Bacardi is seeking to put an end to the long-running trademark dispute over the rights to the Havana Club brand.
The rum giant, whose U.S. headquarters are based in Miami, said it was filing a lawsuit late Monday in U.S. district court in Washington, D.C. The suit asks the court to grant Bacardi exclusive U.S. rights to the premium Cuban rum trademark and cancel the registration currently held by Cubaexport, a Cuban government entity.
''We're asking the court to declare Bacardi the exclusive owner of Havana Club in the U.S. and resolve this matter once and for all,'' according to a statement from Eduardo Sardina, president and chief executive of Bacardi U.S.A.
The lawsuit is an appeal of the Jan. 29 ruling by the Trademark Trial and Appeal Board or TTAB, which rejected Bacardi's efforts to cancel the Cubaexport registration on the grounds that it was registered under fraudulent circumstances. The board also ruled that Havana Club Holdings, a joint venture between the Cuban government and French liquor giant Pernod Ricard, had filed a proper renewal application in 1996 for Cubaexport.
''We think they came to the right decision, and we're confident that decision will be upheld on any appeal that might result,'' said Mark Orr, vice president of North American affairs for Pernod Ricard.
But for Bacardi, the issue is about a difference between common-law ownership and holding the registration for a trademark.
''We're asking for this review because the TTAB failed to take into account a pattern of questionable practices that led to Cubaexport gaining the registration, and current U.S. law which prohibits U.S. registrations of Cuban trademarks that were confiscated with out compensation,'' Sardina said in a statement.
The company is referring to the 1998 U.S. law known as Section 211, whose passage Bacardi lobbied for heavily. The law denies legal protection to trademarks of properties seized by the Castro government, but the World Trade Organization has recommended that the U.S. make changes in the law to comply with requirements for free trade.
The TTAB acknowledged in its ruling that some of Bacardi's issues were not addressed, saying it ``has little or no experience in determining violations of statutes or regulations that do not directly concern registration of trademarks.''
Bacardi claims it has the rights to the Havana Club name dating back to an agreement with original owner José Arechabala in 1995, which was finalized two years later with a sale. Bacardi also established use in the United States, when it sold the Havana Club rum in this country in 1995 and 1996.
The Arechabala family had made the rum brand from the 1930s until Dec. 31, 1959, when Fidel Castro's government seized the plant and the trademark.
Meanwhile, Cubaexport claims it obtained the rights to the name in 1976 after José Arechabala S.A. allowed the trademark to lapse with the U.S. Patent and Trademark Office. Cubaexport registered the trademark in 1976, but no compensation was ever provided to the Arechabala family.
In 1993, Cubaexport formed a joint venture with Pernod Ricard to create Havana Club Holdings. The partnership already markets Havana Club in more than 80 countries, but not in the United States because of the embargo on Cuba. U.S. courts have consistently ruled that Havana Club Holdings has no rights to the trademark in the United States.