A U.S. federal court has ruled that Cuba’s state-owned company, Cubaexport, cannot pursue a trademark infringement lawsuit against Bacardi over the ‘Havana Club’ rum brand in the United States. The ruling comes as part of a long-standing dispute regarding the ownership and rights to the iconic rum label, with significant implications for international trademark law and U.S.-Cuba relations.
On Tuesday, U.S. District Judge Emmet Sullivan ruled that the U.S. trade embargo against Cuba, which restricts business activities between U.S. entities and Cuban entities, prevents Cubaexport from suing Bacardi for alleged trademark infringement in the U.S. court system. The decision marks a significant victory for Bacardi, which sells its own version of Havana Club rum in the United States, while Cubaexport has partnered with French liquor company Pernod Ricard to market the brand internationally—outside of the U.S.
The trademark battle over the Havana Club name dates back decades. Bacardi, which was exiled from Cuba after the Cuban Revolution, claims that the Cuban government unlawfully seized the Havana Club brand from its predecessor, José Arechabala SA, in 1960. Bacardi later purchased the brand and has been selling its version of Havana Club rum in the U.S. since 1995.
Conversely, Cubaexport, which holds the rights to the Havana Club trademark outside the U.S. through its partnership with Pernod Ricard, initially registered its U.S. trademark for Havana Club in 1976. Bacardi challenged Cubaexport’s right to the mark in a legal case that has unfolded over several years.
In 2004, Bacardi filed a lawsuit in Washington, D.C., after the U.S. Patent and Trademark Office (USPTO) refused to cancel Cubaexport’s registered trademark. While the case was paused for nearly a decade, it was revived in 2016 when the USPTO granted Cubaexport’s request to renew the mark. Bacardi subsequently challenged this decision, continuing its legal fight in court.
Judge Sullivan’s ruling on Tuesday effectively blocked Cubaexport from enforcing its U.S. trademark rights due to the constraints imposed by the trade embargo. The ruling clarifies that Cubaexport, which is owned by the Cuban government, cannot use U.S. courts to protect its trademark interests in this jurisdiction, as doing so would violate the embargo.
Cubaexport’s legal counsel, David Bernstein, expressed disappointment with the decision but maintained confidence that the courts would ultimately rule in favor of Cubaexport’s claim to the Havana Club brand. “We are confident that the court will ultimately agree that Cubaexport is the rightful owner of the Havana Club trademark,” Bernstein said in a statement following the court’s ruling.
This case highlights the complex intersection of international trade law, U.S. sanctions policy, and trademark disputes. The decision reinforces the continued challenges that Cubaexport faces in seeking to protect its intellectual property in the U.S. while navigating the ongoing trade embargo. For Bacardi, this ruling further solidifies its position in the U.S. market, where it has been a dominant player in the rum industry since its exile from Cuba.
Both companies continue to engage in separate legal battles related to the trademark, with Bacardi pursuing its own case challenging the renewal of the Cuban brand’s U.S. trademark rights. This ruling may have lasting implications for future trademark disputes involving companies linked to countries under U.S. sanctions.
Read More:
Invention Patents Vs Appearance Patents: What Is The Difference?
What Is An IP Patent Attorney?
How Much Does A Patent Lawsuit Cost?