A Virginia court revokes the dismissal of a complaint brought by Bacardí
14ymedio, Madrid, 18 June 2024 — The Bacardí company will be able to continue fighting for the registration and marketing rights for the Havana Club rum brand in the United States, which are currently in the hands of the Cuban Government through the state-owned Cubaexport. The Court of Appeals of the Fourth Circuit for East Virginia has revoked, Reuters reported, the previous decision of a district court by which the lawsuit of the rum maker, based in Bermuda, was dismissed for “lack of jurisdiction.” The legal battle for the right to use the name began when the Bacardí family, who produced the drink on the Island, decided to leave the country after Fidel Castro came to power in 1959. The company says that it bought the rights for Havana Club from the Arechabala family, which produced the rum until its distillery was confiscated by the Cuban Government.
Cubaexport owned the marketing rights in the United States since it registered the trademark in 1976 until, in 2006, it was denied a renewal in accordance with the embargo laws that prevented it from paying the license without first obtaining an authorization from the Office of Foreign Assets Control (OFAC) of the Department of the Treasury, which had not been granted.
Cubaexport owned the marketing rights in the United States since it registered the trademark in 1976 until, in 2006, it was denied a renewal in accordance with the laws of the embargo
Cubaexport challenged before the courts the denial of the permit, which it lost after a 2012 ruling. Later, in January 2016 and during the thaw that occurred with Barack Obama’s mandate, OFAC changed its decision and issued a specific license that authorized Cubaexport to “make all transactions” and make the payments “necessary to renew and maintain the registration of the Havana Club brand.”
Bacardí counterattacked and filed a lawsuit that sought to reverse the measure, contrary to its interests, through an appeal to the court of the district of Columbia in which the company accused the United States Patent and Trademark Office (USPTO) of making a decision in a “fraudulent way.”
In the lawsuit, Bacardí accused the senior officials of USPTO, including its director, Kathi Vidal, of violating current legislation by renewing the registration of the disputed trademark ten years after its expiration.
The Court of Appeals has now admitted this complaint and revoked the previous judgment, reopening the battle for the rights to the rum.
The (Cuban) state is “confident that the renewal was valid and that the court will agree when it arrives at the substance of this dispute
The defense of Cubaexport, argued by David Bernstein of the firm Debevoise & Plimpton, said that the state-owned company is “confident that the renewal was valid and that the court will agree when it arrives at the substance of this dispute.”
For its part, Bacardí told Reuters that the company is satisfied with the decision, while USPTO declined to comment on the process.
In 1960 the distillery of the Arechabala family, which had produced rum since at least 1930, was confiscated by the Government of Fidel Castro along with some other assets, without receiving any kind of compensation.
Ramón Arechabala, the company’s sales manager, who spent some time in prison after the expropriation ordered by Castro, escaped from the country and arrived in Miami in 1966 with the secret recipe for Havana Club rum. After a few years, he sold the rights to the brand and the original recipe to the Bacardí family.
In 1974, Arechabala’s trademark registrations in the United States for Havana Club rum had expired, and that’s when Cubaexport registered the brand. The business has very juicy figures. In 2021, the company’s international marketing director, Sergio Valdés, said that the company sold more than 4.4 million cases of rum (with 12 bottles to a case) the previous year, 1.7 million of them in Cuba.
Translated by Regina Anavy
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