July 23, 2024
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There has been a new development in a long-standing trademark dispute between Bacardí and the Cuban government entity, Cubaexport, over the "Havana Club" name.
Bacardí won its appeal at the US Court of Appeals for the Fourth Circuit. The ruling permits Bacardí to challenge the US Patent and Trademark Office’s (“USPTO”) decision, which allowed Cubaexport to renew its trademark, despite the statutory deadline having expired years earlier.
Bacardí and Havana Club both have roots in Cuba, but the rum industry was nationalized following Fidel Castro’s revolution in 1959. The founders of Havana Club lost its trademark, and the same trademark was subsequently filed for and obtained by the Cuban government.
Meanwhile, Bacardí was able to move production outside of Cuba and struck a deal with the founders of Havana Club to acquire the rights to the original recipe and trademark. Bacardí registered its Havana Club trademark in the US. The US recognized Bacardí’s claim to Havana Club under a statute aiming to protect Cuban companies that were nationalized post-revolution. Meanwhile, everywhere else in the world, the name belonged to the Cuban government.
The USPTO renewed Cubaexport’s US Havana Club trademark, despite it not having paid its renewal fee. This decision was the subject of a previous lawsuit, where Bacardí argued Cubaexport’s trademark should have expired in 2006. It was ultimately decided that Bacardí could only challenge the mark through trademark office procedures.
However, Bacardí’s recent successful appeal has revived this debate, allowing Bacardí’s court challenge to proceed.
Authors: Hannah Lee and Kasia Donovan
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