Bacardi celebrates in rum trade mark war
Bacardi has staked its claim to the Havana Club rum brand in the US on the back of a USPTO decision not to renew a trade mark owned by the Cuban government and joint venture partner Pernod Ricard.
On August 3 2006 the USPTO declared Cuba's existing registration of the trade mark had expired. The mark had been registered in the US since 1976.
That decision was preceded by a ruling earlier this year by the US Treasury's Office of Foreign Assets Control, denying the Cuban government agency a specific licence critical to getting its trade mark registration renewed.
Pernod issued a statement vowing that it would "vigorously defend its rights" with an appeal against the decision to reject its application to renew its US trade mark registration and any use of the Havana Club brand for non-Cuban made rum.
This is the latest battle in a 10-year old war between the parties. Bacardi claims it bought the rights to the Havana Club name from the Arechebala family in 1997.
The USPTO's decision was in line with a retroactive regulation, Section 211 – criticized by the WTO – which fell under the Omnibus Appropriations Act targeting Cuban trade marks seized under Castro's regime in the late 1950s and early 1960s.
"This is not the final word given Pernod's pending appeal and the history of the battle," said Thomas Casagrande, a partner in the IP practice of Howrey's Houston office.
However, Pat Neal, a spokeswoman for Bacardi USA, said: "We own the brand and have the rights to use it in the US. Bacardi and the Arechebala family are the only ones who have ever had the rights to use the brand. As lawyers know, this is about common law usage. It is indisputable that Bacardi and the Arechebala family have the rights to use the brand in the US."
She said several courts – all the way up to the Supreme Court – have ruled that the joint venture between the Cuban government and Pernod does not have any rights to the Havana Club name in the US.
But Howrey's Casagrande said that the USPTO's administrative ruling is not technically binding on the Federal Court, and does not automatically mean that Bacardi can use the mark legally.
Joseph Gioconda, an IP partner with Kirkland & Ellis added that the USPTO's hands were tied by other statutes and had to follow accordingly.
Others do not see the battle continuing any further in other parts of the world. "Trade mark rights are acquired through use, with some limited exceptions," said Jim Kayden, partner with Thomas, Kayden, Horstemeyer & Risley and co-president of Association of Patent Law Firms. "Without use in the US, the Cuban/French case was a losing proposition." "Bacardi likely doesn't care that much about other markets if they can have the US. I'd be surprised to see any more fighting over the Havana Club mark in other parts of the world."
For some, the battle between the parties and the latest USPTO decision seems more of a political issue than a trade mark issue. "This has been played out in the Trademark Office, but it's not happened in isolation," said Jonathan Moskin, a partner at White & Case.
In 2005, for example, Cuban company Cubatabaco was prevented from obtaining judicial protection of its US Cohiba trade mark in the US, because of the US blockade of Cuban products.
A US company, General Cigar, was given the greenlight to use the mark onshore.
Some lawyers criticized the US position. "I believe what goes around comes around," said Stephen Hoffberg, partner at Milde & Hoffberg. "And if the US administrative agencies take a short-term position to the benefit of an American company, thereby disrespecting foreign companies, this gives licence to foreign companies to disrespect US companies and favour local companies – this is with respect to all areas of IP, not just trade marks."
Marc Levy, a partner at Preston Gates, said other brand owners should not worry about the decision – unless they acquired trade marks from pre-Castro Cuban entities. Levy emphasized that the cancellation of the mark stemmed solely from legal issues relating to US-Cuba relations and the trade embargo. "The registration was cancelled because the owner of the registration was not granted a licence from the Office of Foreign Assets Control, as required under an Act of Congress implementing the Cuban embargo (known as Section 211)."
On August 3 2006 the USPTO declared Cuba's existing registration of the trade mark had expired. The mark had been registered in the US since 1976.
That decision was preceded by a ruling earlier this year by the US Treasury's Office of Foreign Assets Control, denying the Cuban government agency a specific licence critical to getting its trade mark registration renewed.
Pernod issued a statement vowing that it would "vigorously defend its rights" with an appeal against the decision to reject its application to renew its US trade mark registration and any use of the Havana Club brand for non-Cuban made rum.
This is the latest battle in a 10-year old war between the parties. Bacardi claims it bought the rights to the Havana Club name from the Arechebala family in 1997.
The USPTO's decision was in line with a retroactive regulation, Section 211 – criticized by the WTO – which fell under the Omnibus Appropriations Act targeting Cuban trade marks seized under Castro's regime in the late 1950s and early 1960s.
"This is not the final word given Pernod's pending appeal and the history of the battle," said Thomas Casagrande, a partner in the IP practice of Howrey's Houston office.
However, Pat Neal, a spokeswoman for Bacardi USA, said: "We own the brand and have the rights to use it in the US. Bacardi and the Arechebala family are the only ones who have ever had the rights to use the brand. As lawyers know, this is about common law usage. It is indisputable that Bacardi and the Arechebala family have the rights to use the brand in the US."
She said several courts – all the way up to the Supreme Court – have ruled that the joint venture between the Cuban government and Pernod does not have any rights to the Havana Club name in the US.
But Howrey's Casagrande said that the USPTO's administrative ruling is not technically binding on the Federal Court, and does not automatically mean that Bacardi can use the mark legally.
Joseph Gioconda, an IP partner with Kirkland & Ellis added that the USPTO's hands were tied by other statutes and had to follow accordingly.
Others do not see the battle continuing any further in other parts of the world. "Trade mark rights are acquired through use, with some limited exceptions," said Jim Kayden, partner with Thomas, Kayden, Horstemeyer & Risley and co-president of Association of Patent Law Firms. "Without use in the US, the Cuban/French case was a losing proposition." "Bacardi likely doesn't care that much about other markets if they can have the US. I'd be surprised to see any more fighting over the Havana Club mark in other parts of the world."
For some, the battle between the parties and the latest USPTO decision seems more of a political issue than a trade mark issue. "This has been played out in the Trademark Office, but it's not happened in isolation," said Jonathan Moskin, a partner at White & Case.
In 2005, for example, Cuban company Cubatabaco was prevented from obtaining judicial protection of its US Cohiba trade mark in the US, because of the US blockade of Cuban products.
A US company, General Cigar, was given the greenlight to use the mark onshore.
Some lawyers criticized the US position. "I believe what goes around comes around," said Stephen Hoffberg, partner at Milde & Hoffberg. "And if the US administrative agencies take a short-term position to the benefit of an American company, thereby disrespecting foreign companies, this gives licence to foreign companies to disrespect US companies and favour local companies – this is with respect to all areas of IP, not just trade marks."
Marc Levy, a partner at Preston Gates, said other brand owners should not worry about the decision – unless they acquired trade marks from pre-Castro Cuban entities. Levy emphasized that the cancellation of the mark stemmed solely from legal issues relating to US-Cuba relations and the trade embargo. "The registration was cancelled because the owner of the registration was not granted a licence from the Office of Foreign Assets Control, as required under an Act of Congress implementing the Cuban embargo (known as Section 211)."
posted by Alain Biron at 10:55
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