Bacardi has been selling Havana Club rum in the United States since the mid-1990’s. Bacardi purchased the rights to the Havana Club trademark from the creators and original owners – the Arechabala family – who made their rum in Cuba from the 1930s until 1960 and exported it to the U.S. and other countries until their rum-making facilities and assets were illegally seized without compensation during the Cuban revolution. Pernod Ricard markets the rum around the rest of the world on behalf of the Cuban government.
Many recent lawsuits have had kind of a David vs. Goliath story line about a startup craft distillery using a name that was dormant since prior to Prohibition. Those suits usually end up with Goliath winning and David having to change the distillery name to something else. In the case of Bacardi vs. Pernod Ricard, its more a story of Goliath vs. Goliath. Throw in a case of capitalism vs. socialism and you just rekindled the cold war.
In a recent unexpected move, the U.S. Department of the Treasury recently granted the trademark registration of Havana Club to the Cuban government. Bacardi contends this decision was done in violation of the language and spirit of U.S. law. In response, Bacardi has filed a Freedom of Information Act (FOIA) request with the U.S. Department of Treasury to bring to light the reasons for the decision to grant the renewal of the illegally obtained trademark registration of Havana Club to the Cuban government.
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Bacardi seeks all documents, communications and files that were created, used, or maintained by the U.S. Patent & Trademark Office (PTO), Office of Foreign Assets Control (OFAC), U.S. Department of State, Executive Office of the President of the United States (POTUS), the National Security Council (NSC), U.S. Department of Treasury and/or any third parties relating to the Havana Club rum trademark registration action.
Bacardi Claims the Havana Club Brand Was Stolen by the Cuban Government
The action stems from a January 11, 2016, decision by the U.S. government in violation of Section 211 and long-standing OFAC policy to abruptly reverse its position and grant the license. Within 48 hours, after years of inactivity, the PTO approved the renewal of the registration of a trademark for a brand which was confiscated without compensation from its founders into the hands of the Cuban government – even though Congress has prohibited U.S. courts from recognizing it.
“We are filing this Freedom of Information Act request because the American people have the right to know the truth of how and why this unprecedented, sudden and silent action was taken by the United States government to reverse long-standing U.S. and international public policy and law that protects against the recognition or acceptance of confiscations of foreign governments,” says Eduardo Sánchez, senior vice president and general counsel, Bacardi. “When the highest and most powerful government agencies are not transparent about critical changes in policy, the public has the right and the responsibility to use FOIA requests and other tools at their disposal to hold the government accountable for its actions.”
“Bacardi believes that vital government agencies should not be able to ignore Lanham Act obligations or disregard the general legal requirements of government agencies and courts under Section 211 and related legislations to protect expropriated properties and uphold critical provisions of the embargo,” adds Sánchez, as previous U.S. administrations have denied license applications from the Cuban government seeking the rights to maintain Cuba’s illegally obtained U.S. trademark registration for Havana Club.
Bacardi has been a long-time supporter of trademark rights for legitimate trademark holders and remains committed to defending the fundamental rights against confiscations without compensation. The company supports both legislation and legal action to uphold the principle of protection of trademarks and ensuring trademarks that have been confiscated by the Cuban government without consent of their rightful owners not be recognized by the international community.
Bacardi has and will continue to pursue all the necessary legal and other actions to defend its position surrounding the legitimacy of its rights and ownership of Havana Club rum. As the company has maintained all along, Bacardi is the legitimate owner of the brand.