Bacardi loses US appeal in long-running 'Havana Club' trademark dispute (updated)

Pernod Ricard SA

Tue 17:59

Adds Bacardi statement in paragraph 3
By Blake Brittain

    June 16 (Reuters) - A U.S. appeals court ruled against Bacardi [RIC:RIC:BACLTD.UL] on Tuesday in the company's long-running dispute with the Cuban government over the trademark rights to "Havana Club" rum in the United States.
The Richmond, Virginia-based 4th U.S. Circuit Court of Appeals rejected Bacardi's challenge to a U.S. Patent and Trademark Office decision to renew Cuba-owned Cubaexport's federal "Havana Club" trademark in 2016 over the company's objections.

    Bacardi said in a statement that it was "disappointed that the court granted the Cuban government a 10-year grace period for renewing a trademark that was stolen in the first place." The company also said that Cubaexport's trademark will expire later this month and cannot be renewed under a 
    2024 law
     that bars U.S. courts and agencies from recognizing trademarks confiscated by the Cuban government.
  
A Cubaexport attorney and USPTO spokesperson both declined to comment. 
The company, which left Cuba after the Cuban Revolution, said the Cuban government unlawfully seized the Havana Club name and assets from Jose Arechabala S.A. after the revolution in 1960. Bacardi bought Jose Arechabala's brand, and started selling Havana Club rum in the U.S. in 1995.
Cubaexport, a state-owned Cuban business, first registered its Havana Club trademark in the U.S. in 1976. Cubaexport and French spirits company Pernod Ricard PERP.PA sell Havana Club rum outside of the United States.
Pernod, which is not involved in the case, did not immediately respond to a request for comment on the Tuesday decision.
Cubaexport tried to renew its U.S. trademark in 2005, but was prevented from doing so after the U.S. Treasury Department's Office of Foreign Assets Control refused to issue it a license. OFAC changed course and issued the license near the end of the Obama administration, and the USPTO renewed Cubaexport's trademark in 2016.
Bacardi sued the USPTO in a Virginia federal court in 2021, arguing that Cubaexport's trademark should have expired in 2006. U.S. District Judge Liam O'Grady dismissed the case in 2022, finding that Bacardi could only challenge the mark through trademark office procedures. The 4th U.S. Circuit Court of Appeals revived the case in 2024.
U.S. District Judge Leonie Brinkema dismissed the lawsuit again last year. A three-judge 4th Circuit panel upheld Brinkema's ruling on Tuesday.
"The OFAC license cleared the fog, removing the legal obstacle that had prevented the 2005 transfer from counting as payment," the appeals court said. "What looked incomplete in 2006 was, by 2016, timely and effective."
The case is Bacardi & Co Ltd v. Squires, 4th U.S. Circuit Court of Appeals, No. 25-1355.
For Bacardi: David Zionts of Covington & Burling
For the USPTO: Weili Shaw of the Department of Justice
For Cubaexport: Carl Micarelli of Debevoise & Plimpton
     
Read more:

    Bacardi loses again in 'Havana Club' lawsuit against US Trademark Office
  

 (Reporting by Blake Brittain in Washington)