Madrid Provincial Court confirms rejection of Bacardi’s claims
to the “Havana Club” trade mark in Spain
The Madrid Provincial Court has entered another ruling
rejecting the claim by the multinational Bacardi to the
Spanish trade mark “Havana Club” for Cuban rum.
The
dispute began in 1999 when Bacardi brought a complaint before
the Madrid courts petitioning for recognition as owner of the
trade mark and cancellation of the registrations of the trade
mark held by its competitor Havana Club Holding. The Madrid
Court of First Instance rejected that complaint in June 2005.
Bacardi appealed against that ruling but now the Madrid
Provincial Court
of Appeal has confirmed the Court of First Instance’s
judgment. Bacardí has announced that it intends to appeal
again this new ruling.
The
Appeal Court decided that Havana Club Holding properly
acquired the Havana Club trade mark rights for several reasons
including:
Claims of Bacardi about
recovery of its alleged property are unfounded. The people who
sold Bacardi their purported rights to the Spanish Havana Club
trade mark (the Arechabala family, the former shareholders of
the Cuban company JASA), had registered the trademark in 1935
but had failed to renew and use it and had never marketed
Cuban rum in Spain. The Court of Appeal clearly stated that
“the trademark was never used in Spain by JASA before 1959,
because it had never exported rum to Spain.”
The Court recognised that the
prestige of the Havana Club trade mark was the direct and sole
result of the long-standing commercial efforts and investments
by Havana Club Holding. Bacardi's action was therefore
considered unfair and abusive, with the sole aim of damaging a
competitor.
The Court also held that pursuant to international treaties
between Spain and Cuba, rum produced anywhere other than in
Cuba cannot be marketed in Spain under the name “Havana” or
similar names. Such a ruling was considered as necessary to
prevent consumers from being misled as to the rum’s origin.
Havana
Club is amongst the fastest growing spirit brands worldwide,
having experienced double digit growth every year since
Havana Club International’s creation. This joint venture was
set up in November 1993 by the Cuban company Corporation Cuba
Ron S.A. and the Pernod Ricard Group, with the goal of
developing the Havana Club brand internationally through
Pernod Ricard’s strong international distribution network. The
company’s ambition is to grow the brand to five million cases
by 2013 and become the leading international brand of dark
aged rums.The company is based in Havana and exports to 124
countries throughout the world, with the exception of the USA,
where Cuban products are banned due to the trade embargo.
Marc
Beuve Mery CEO of Havana Club International S.A comments:
“this new ruling confirms the indisputable rights of Havana
Club Holding to the Havana Club brand”.
For more information, please contact :
Kaye Rawlings/Jo Dalley
Richmond Towers Communications
26 Fitzroy Square
Londres W1T 6BT
kaye@rt-com.com
