Pernod Ricard and Havana Club International appear encouraged by the dissenting opinion of the DC Circut Court regarding their ongoing trademark case.
HC Trademark Battle Continues
Today, the United States Court of Appeals for the District of Columbia Circuit issued a 2-to-1 ruling in a controversial decision stripping Cubaexport of its United States rights in the 35-year-old trademark registration for Havana Club. Havana Club International, a joint venture between Pernod Ricard and Corporación Cuba Ron, has vowed to work with Cubaexport to seek a rehearing from this decision and to continue to defend the Havana Club trademark in the United States.
This decision is based on Section 211, which has been condemned by the World Trade Organization and the U.S. Chamber of Commerce. Today’s decision does not give any rights in the Havana Club trademark to Bacardi. To the contrary, Bacardi’s efforts to register Havana Club trademark were rejected by the United States Patent and Trademark Office.
Ian FitzSimons, General Counsel Pernod Ricard, said: “We strongly disagree with the court’s decision but are encouraged by the dissenting opinion of Judge Silberman who stated ‘The court’s opinion, in my view, is unsound doctrinally, both with regard to principles of statutory interpretation and to basic tenets of administrative law.’ Therefore, Cubaexport will seek a rehearing by the Court of Appeals.”
“By virtue of its 1976 trademark registration, Cubaexport owns the Havana Club trademark in the United States. It is surprising that a U.S. court would allow an intellectual property right to be destroyed retroactively by refusing to allow renewal of this trademark registration”, stated FitzSimons.
The decision has no effect on the Havana Club trademark in other countries. Havana Club joint venture has always successfully defended its ownership on the Havana Club trademark, registered in over 120 countries where the Cuban rum is commercialized. In fact, last February, the Supreme Court of Spain decisively rejected Bacardi’s claims to own the Havana Club trademark in that country.
Since the founding of Havana Club International in 1993, the Havana Club brand has become one of the most valuable brands in the spirits industry. Today, Havana Club rums are sold in more than 120 countries around the world. The Havana Club brand is one of the trendiest and most valuable brands in the spirits industry; it is listed as the No. 2 international rum brand worldwide, excluding the U.S. market, and the No. 3 top Elite Brand on the rankings published by IWSR.