The U.S. Court of Appeals dealt Havana Club a serious blow last week when they ruled in favor of Bacardi in their ongoing trademark case.
Pernod Ricard USA pledged to continue to fight against a competitor’s use of the “Havana Club” name in the United States for non-Cuban rum following last week’s controversial ruling by a three-judge panel of the US Court of Appeals for the Third Circuit. The panel refused to block Bacardi from using the “Havana Club” name in the United States to sell its non-Cuban spirit despite evidence that the name misleads consumers into believing that Bacardi’s “Havana Club” rum comes from Cuba.
Significantly, the panel noted that this decision does not give Bacardi any trademark rights in the “Havana Club” name. In that connection, the panel acknowledged that the U.S. Patent and Trademark Office has refused Bacardi’s attempt to register various Havana trademarks (such as Havana Select, Old Havana and Havana Primo) because those marks would deceive purchasers into believing that the rum came from Cuba.
In 2006 Bacardi began to distribute in small quantities in the United States its own spirit under the “Havana Club” label. Yet, the Bacardi bottle contains rum made in Puerto Rico and not in Cuba, as the name implies.
For more than 15 years, millions of cases of authentic Cuban rum have been marketed outside the United States under the name “Havana Club” by a joint venture between Pernod Ricard S.A. and Corporación Cuba Ron. In the United States, the joint venture’s “Havana Club” rum cannot be sold because of the embargo on Cuban products.
Ian FitzSimons, General Counsel of Pernod Ricard, said, “We disagree with the court’s decision, which is unfair to consumers in the United States who are being deceived by a product labelled “Havana” which has no connection whatsoever with Cuba. It is important to note that this decision does not grant any right in the ‘Havana Club’ trademark to Bacardi. We are determined to continue to fight for fair competition in the United States market where ownership of the ‘Havana Club’ trademark dates back to 1976.”
Pernod Ricard USA’s parent company, the French wine and spirits distributor Pernod Ricard S.A., is a partner in the Havana Club joint venture that has always successfully defended its ownership of the “Havana Club” trademark in over 120 countries where the Cuban rum is registered and commercialized. The extremely successful sale of Cuban “Havana Club” rum in the rest of the world is unaffected by the decision.