Pernod Ricard/Bacardi trademark conflict
The Havana Club trademark has been the subject of extensive trademark litigation in the US, Spain, and World Trade Organization (WTO).[8]
After José Arechabala S.A. was nationalized, the Arechabala family fled Cuba and was forced to stop producing rum. The US trademark registration for "Havana Club" lapsed in 1973. The family alleges that this was due to the company's lawyer, Javier Arechabala, remaining imprisoned at the time.[9] Taking advantage of the lapse, the Cuban government registered the mark in the US in 1976.[10] The brand was then assigned by the Cuban government to Pernod Ricard in 1993.
In 1994, Bacardi obtained the Arechabala family's remaining rights in the brand and began producing limited amounts of rum bearing the name. 922 cases were sold in the US in 1995 and 1996.[11] This drew litigation from Pernod Ricard.[3][12] Pernod Ricard was successful in two of the first three court holdings issued in this litigation.[13]
However, in 1998, after heavy lobbying from Bacardi, the US Congress passed the "Bacardi Act" (Section 211 of the Omnibus Appropriations Act of 1998[14]), which protected trademarks related to expropriated Cuban companies, and effectively ended the first phase of the litigation by eliminating Pernod Ricard's standing.[6][15] The statute has been applied only to the Havana Club trademark,[3] and was ruled illegal by the WTO in 2001 and 2002, on grounds that it singled out one country (Cuba).[16] The United States has not yet acted to address the WTO ruling,[17] despite a 2005 deadline and requests from the European Union.[18]
Following the initial round of litigation, the second round of litigation occurred, through both the US Federal court system and the Trademark Trial and Appeal Board, focused in part on the allegedly deceptive nature of the use of "Havana" in the name of a rum produced outside of Cuba. This round of litigation lasted from 2009 to 2012, and again resulted in a victory for Bacardi.[10] After this defeat, Pernod Ricard announced plans to market the product in the US under the "Havanista" mark,[19] while Bacardi announced plans to extend distribution of Bacardi's version of Havana Club throughout the US.[20]
In Spain, Pernod Ricard's ownership of the mark has been upheld in three court rulings, most recently in 2011.[12]
In January 2016, after a thaw in U.S.–Cuba relations, the U.S. government awarded a trademark for Havana Club to the Cuban government, which was "expected to reignite longstanding tension between Bacardi Ltd. and the Cuban government".[21][22] Bacardi appealed the decision, and in 2017, a bipartisan delegation from the Florida House of Representatives asked new President Donald Trump to reverse the decision.[23][24]
In January 2025, a Virginia federal court ruled in favour of Pernod Ricard and the Cuban government by dismissing a lawsuit filed by Bacardi over the renewal of Cubaexport's "Havana Club" trademark.[25]
