Havana Club rum is one of Cuba’s most famous products and exports along with their cigars. However, you might not know that Bacardi was selling rum which was brewed in Puerto Rico under the trade mark Havana Club for several years in the US. Although the Cuban government sold this famous brand in most other jurisdictions, the US remained a market in which they couldn’t sell their product due to the embargo. As discussions turn to restoring diplomatic relations with Cuba and lifting the embargo, Bacardi rum may soon face competition. Especially after Cuba’s government has received approval to use the Havana Club trade mark.
Litigation Between Pernod Ricard and Bacardi
Litigation between Bacardi and Pernod Ricard has been ongoing for several years as Ricard attempted to register the trade mark unsuccessfully. Ricard and the Cuban Government have an agreement to sell and distribute the Havana Club brand around the world.
The US Patent and Trademark Office recently awarded the trade mark to the Cuban Government that Bacardi had been using since the 1990s. This move is seen as a pre-emptive one, as the embargo is still in place meaning Cuba’s Government and Pernod Ricard could move into the market later on and sell rum under the Havana Club brand.
How Did Bacardi Acquire the Trade Mark in the First Place?
The issue traces back to 1973 when the Arechabala family who owned the Havana Club brand and business gave up the US trade mark by failing to renew it, after which Bacardi took up the trade mark. At this stage, the Cuban government and Pernod Ricard began selling and promoting the brand Havana Club around the world (except the US market), registering the name across hundreds of jurisdictions including a number of trademarks in Australia. After the Cuban Government’s numerous attempts, they successfully applied this year and were approved for the Havana Club trade mark.
It would be very difficult for a company to register the name Havana Club in Australia as the name has already been registered and is actively used in the Australian market. Australian businesses might also have difficultly registering a trade mark and promoting a product as “Havana” if it was unclear whether the product was actually produced in Cuba.
There was also previously a case in which Pernod Ricard argued that Bacardi was using the geographical indicator Havana, which would confuse consumers. However, they were not successful as the court held that the bottles clearly stated the alcohol was brewed in Puerto Rico.
A geographical indicator is a destination or region which is heavily linked a particular product, food or drink (for example Champagne, Parma ham or feta cheese). Each jurisdiction has different definitions of what constitutes a geographical indicator and how it should be enforced. In the US, as these terms are often used to describe a product generally, focusing on enforcement is secondary. You should also be wary of using geographical indicators in Australia. Some examples of geographic indicators in Australia include wine regions such as the Hunter Valley or Margaret River.
Lessons for Australian Brands
Brands can take note of the differences between the US and Australian trade mark laws. Notably, if a jurisdiction is an important market for you and your brand, don’t let the trade mark lapse. A trade mark lawyer can assist you in this area by monitoring your trademarks across a variety of jurisdictions and letting you know when they are up for renewal. They can also let know which trademarks you can and can’t register and the likelihood of success.
Questions? Ask our trade mark lawyers.