US: Bacardi files suit over Havana Club
Bacardi yesterday filed a lawsuit in the Washington DC federal district court appealing the recent ruling by the Trademark Trial and Appeal Board or TTAB, which it lost over the ownership of the Havana Club Trademark.
The TTAB had rejected Bacardi's efforts to cancel the Cubaexport registration of the trademark. It ruled that Havana Club Holdings, a joint venture between the Cuban government and French liquor giant Pernod Ricard, had filed a proper renewal application in 1996 for Cubaexport.
However, Bacardi is now asking asking for a declaratory judgment that Bacardi is the exclusive owner of the Havana Club brand.
The filing also asked the court to cancel the trademark registration currently held by Cubaexport, a Cuban government entity. After years of legal action in the court and Federal government agencies, Bacardi requested all outstanding issues relating to its US ownership of the Havana Club brand be concluded.
In a statement the Bermudan-based group said: "US law draws a distinction between common law ownership of a trademark, which is based on use, and holding the registration for that trademark. Bacardi has won all US court cases relating to the rights to use the Havana Club brand, up to the US Supreme Court. However, a recent Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office ruling left one issue of the dispute to be resolved, when it allowed Cubaexport to retain title to the registration. By law, Cubaexport's registration cannot be recognised."
"The TTAB acknowledged in its ruling that it only has the authority to address trademark registration issues and suggested all broader issues such as rights to use go to the court for a decision," said Eduardo Sardina, president and CEO, Bacardi USA. "We're asking for this review because the TTAB failed to take into account a pattern of questionable practices that led to Cubaexport gaining the registration, and current US law which prohibits US registrations of Cuban trademarks that were confiscated without compensation."
In its filing, among other things, Bacardi specifically asks the U.S. District Court to cancel the current registration of Cubaexport with the Patent and Trademark Office (PTO) on grounds that it expired and was not validly renewed; and that it was fraudulently obtained and maintained by Cubaexport. It also askes it declare that Bacardi owns the common law rights to the Havana Club trademark and that Cubaexport has no enforceable rights in the mark or the registration.
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