HAVANA, march 17th Bacardi Ltd. wants to revive its federal lawsuit against Pernod Ricard and its Cuban government partner, asking the court to cancel the Cuban government’s Havana Club U.S. trademark based on alleged fraud.
An amended complaint filed Tuesday with U.S. District Judge Emmet Sullivan in Washington seeks to rekindle a case that had been stayed since 2007 involving two of the world’s largest spirits companies and Cubaexport, a Cuban government agency. In January, the U.S. Patent and Trademark Office permitted the Cuba government to renew its Havana Club registration retroactively, surprising Bacardi and leading it to take up the court fight again.
The amended complaint was filed the same day the Obama administration announced a new round of changes to further remove financial and travel restrictions with Cuba.
Bacardi, which purchased the right to the trademark from the original owner, argues the Cuban government and joint venture partner Pernod Ricard were deceptive in obtaining and renewing the Havana Club trademark in the U.S. in part by not stating that the business had been confiscated by the Cuban government in 1960. The complaint also argues U.S. law prohibits any court from validating the Cuban government’s assertion of rights because the mark was associated with an illegally confiscated business.
Bacardi makes Havana Club rum in Puerto Rico and sells it in 19 states. Because of the U.S.-Cuba trade embargo, Pernod Ricard has not been able to sell its Havana Club in the U.S. but markets the product in Cuba and elsewhere.
The battle over the brand name was the subject of a House Judiciary subcommittee hearing last month when State Department officials said the case has been a stumbling block for U.S. diplomats arguing for intellectual property rights abroad.
“As someone who is charged with the promotion of intellectual property rights overseas, it’s a matter of pride in explaining the strength of the United States’ intellectual property rights system and that we do have a court system that operates well and considers the merits of each case in a proper fashion,” Kurt Tong, principal deputy assistant secretary of state, told House members. “I’m confident that our court system will provide the most high-quality judgment in this case compared with any other country.”
In the hearing, Tong said the administration decided to trust U.S. courts to handle the matter without interference.
In a release Tuesday, Rick Wilson, senior vice president of external affairs for Bacardi in the U.S., said he was disappointed by the position. “A let-the-courts-decide mentality is not the way to go when for decades the Cuban government and its business partner intentionally and knowingly concealed and misrepresented to the PTO the pertinent facts that have undermined its claims as the lawful owner of the mark in order to deceive the PTO and maintain the registration,” Wilson said.
Bacardi is seeking an injunction to prohibit the Cuban government and Pernod Ricard from using or registering any mark including the words Havana Club or interfering with Bacardi’s use of the mark. It also seeks a determination that it has common law rights to the mark based on its distribution and sales of Havana Club-branded products in the U.S. and is not infringing on marks owned by the Cuban government or Pernod Ricard based on expropriation laws.
Bacardi and Havana Club were the two biggest rum makers in Cuba and friendly competitors when Fidel Castro took control. Revolutionary forces seized a Havana Club plant owned by the Arechabala family, which pursued the trademark after fleeing the island and striking a partnership with Bacardi.
Cubaexport obtained its trademark in 1976.