U.S. Blocks Cuba-Owned Trademarks, Potentially Ending Havana Club Dispute

This week, President Joe Biden signed the “No Stolen Trademarks Honored in America Act of 2023,” potentially bringing the ongoing dispute between Bacardi and Pernod Ricard over the Havana Club trademark to an end. The law prevents executive agencies of the U.S. government, including the Patent and Trademark Office, from “recognizing, enforcing, or validating” trademarks seized by the Cuban government following the Communist revolution of 1959.

As signed, the law nullifies Cubaexport and Pernod Ricard’s claims that Bacardi is violating the Havana Club trademark in the U.S., effectively settling the longstanding dispute in favor of Bacardi and it’s Puerto Rico-distilled Havana Club brand. While this seemingly settles the dispute once and for all, the new law doesn’t cancel Cubaexport’s U.S. trademark for Havana Club, which the group has held since 1976 and will hold through 2026.

In a statement, Pernod Ricard said, “It is important to emphasize that this legislation does not immediately revoke the current rights to the Havana Club trademark in the United States, which will remain under the ownership of Cubaexport until their expiration in 2026. Until then, Pernod Ricard and Cubaexport are considering all their options to safeguard their rights.”

Neither the companies nor the brand are mentioned in the language of the law but a Congressional committee report on the act from September 2023 explicitly mentions the brand, the companies, and the longstanding dispute.

“Bacardi is pleased that Congress and the current administration strengthened the law which does not allow the Cuban government or others to profit in the United States from a trademark that was used in connection with a business or assets that were confiscated by the Cuban government,” said Bacardi.

Outside of the beverage alcohol industry, Cuba’s Foreign Minister took to X, formerly Twitter, to say: “The so called “Stolen Trademarks Act” signed by Biden modifies the law into an aggressive measure against #Cuba, precisely with the purpose of opening up the door, in violation of International Law, to the theft of Cuban Trademarks that are legally registered in that country.”

The dispute between the companies stretches back to the 1990s, when Pernod partnered with Cubaexport to distribute Havana Club internationally and Bacardi acquired the brand rights from the Arechabala family in the U.S. This potentially final iteration of the dispute stems from former President Barack Obama’s efforts to normalize relations between Cuba and the U.S. According to the congressional report, in 2016, the Obama administration recognized Pernod Ricard/Cubaexport’s trademark, kicking off rounds of litigation that have continued through this year.

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