After the decision of the U.S. Court of Appeals... Pernod Ricard Blocked From Protecting Havana Club Brand in the United States.

Business Editors

PARIS--(BUSINESS WIRE)--Feb. 7, 2000

Conflict Between EU and US Over Trade Marks 

Could Heat Up in World Trade Organization

In dismissing the protest of HCH company against the Bacardi company for having usurped the name Havana Club, the ruling of the United States Count of Appeals of New York in effect deceives the consumer about the origin of the product, according to Pernod Ricard, 50 percent owner of HCH ( Havana Club Holding). The Bacardi company has commercialized a Bahamian rum in the United States under the name Havana Club with the slogan: &uot;discover the flavor of old Havana.&uot;

Several weeks before the hearing by the U.S. Court of Appeals, that is two years after the HCH complaint was filed against Bacardi, a tailor-made piece of legislation was adopted in the United States to prohibit the courts from protecting brands and commercial names that once belonged to exiled Cubans, including brands that had been voluntarily abandoned. This was &uot;Section 211&uot; that the New York District Court in the first instance (April 1999) and the U.S. Court of Appeals (February 2000) have decided to apply retroactively.

HCH may bring the matter before the Supreme Court, according to Pernod Ricard.

The European Union joined the controversy in 1999 by starting proceedings against Section 211 and the United States before the World Trade Organization on the basis that the law is contrary to TRIPS agreements on trade-related aspects of intellectual property signed by the United States. After a phase of consultations that have produced no result, the situation can take a more contentious turn.

The brand Havana Club, originating in the 19th Century in Cuba, was voluntarily abandoned, beginning in 1995, each time a trade mark came up for renewal in eight countries where the former owners had registered it. The owners at the time were in serious financial difficulties.

Having fallen into the public domain, the Havana Club brand was relaunched after the Cuban revolution in 1959 and registered in 80 countries by the export company for Cuban rums. In the United States, the brand had been registered in 1974 and renewed without contest twenty years later; however, because of the U.S. embargo again Cuba, Havana Club rum was not imported into the United States.

In 1996, disturbed by the worldwide success of the Havana Club brand, Bacard decided to exploit the brand for its own use in the United States.

Havana Club has been distributed in Cuba and around the world since 1993 by the Pernod Ricard network, following the creation of HCH, an affiliate of Pernod Ricard and a Cuban company.