Wednesday, January 27, 2016
In his first media interview on the matter, given exclusively to World Trademark Review, Ian FitzSimons, general counsel of Pernod Ricard, has expanded on the news that Cubaexport has received a specific license allowing it to renew the Havana Club trademark registration in the United States. While a positive development for the company, he tells us that the dispute with Bacardi over the brand name is basically back to where it was in 2006.
A spokesperson for Bacardi told us that, at this time, the company is not commenting beyond the statement it issued on the matter. In their statement, Bacardi notes that the government's move "to resurrect this dead registration" has left the company "shocked and very concerned by this unprecedented action". Contending that it has "reversed long-standing US and international public policy and law that protects against the recognition or acceptance of confiscatory actions of foreign governments", the company adds that it "has and will continue to pursue all the necessary legal actions to defend its position surrounding the legitimacy of Bacardi's rights and ownership of HAVANA CLUB".
The legal dispute will likely commence imminently, with the resumption of the previously halted action in the US District Court. FitzSimons explains: "When we were unable to renew the trademark in 2006, the action was stayed. So that lawsuit is expected to resume in the coming weeks or months. We have notified the court of the change in status of the trademark and therefore the case goes back to the US courts (where we feel it rightly belongs) and they will decide it on its merits. We think that is the right outcome - it doesn't favor one party over another and the US courts are an equitable forum that Bacardi have chosen to sue us in front of. We are back to where we were ten years ago."
For now, there are two certainties. First, that the legal battle over the Havana Club brand is far from over. Second, that the stakes are high. As FitzSimons concludes: "The US rum market is 40% of the worldwide rum market so there is a huge opportunity that we haven't been able to exploit to date. If that market does open up, we will be very excited about it. Havana Club is the third biggest rum brand and the number one Cuban rum in the world and it has achieved that without access to that market. So there is a lot of potential there."
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