Source: Reuters

On June 13, the U.S. Court of Appeals for the Fourth Circuit ruled in favor of Bacardi in its fight for the rights to market Havana Club in the United States, to the detriment of the Cuban government and its company Cubaexport.

The court reversed a district court ruling, declaring that U.S. trademark law does not prevent the popular rum brand from suing the U.S. Patent and Trademark Office (USPTO) under the Administrative Procedure Act (APA) for allowing the renewal of the trademark registration despite the failure to comply with the statutory deadline.

It should be recalled that Havana Club was Bacardi’s rum brand before the Cuban regime expropriated its facilities. The recent court decision allows Bacardi to continue its legal battle. They allege they bought the rights to the brand from the Arechabala family, whose assets, including their distillery, were confiscated by Fidel Castro after he took power in 1959.

Cuba export registered the Havana Club trademark in the U.S. in 1976, maintaining the rights until 2006, when it was denied license renewal due to U.S. embargo laws. During Barack Obama’s term, the Office of Foreign Assets Control (OFAC) changed its decision, allowing Cuba export to renew its registration, which reignited the court battle.

Consequently, in disagreement with this measure, Bacardi filed a lawsuit alleging that the trademark registration renewal was carried out after the statutory deadline. Therefore, the Fourth Circuit Court of Appeals for the State of Virginia has now reversed the previous dismissal of this lawsuit, allowing the case to continue.

On this note, it is essential to mention that in November 2023, the U.S. House of Representatives passed a bill called “No Stolen Trademarks Honored in America,” which prohibits the validation and use of trademarks that have been confiscated by the Cuban regime since 1959.

The regulation seeks to protect the interests and rights of businesspeople who were victims of the island’s regime’s confiscation of assets, except in cases in which it is demonstrated that the trademark’s original owner clearly consented to the transfer.