Home / Insights / Cubaexport Barred from Suing Bacardi Due to Trade Embargo

Cubaexport Barred from Suing Bacardi Due to Trade Embargo

by | Jan 27, 2025 | Intellectual Property, Trademark

On the list of things that can potentially prevent your trademark infringement lawsuit from going forward, a “trade embargo” probably is not very high. But that is precisely why Cuban company Cubaexport was prevented from suing Bacardi in the U.S.

From the outside, the basics of this situation appear to be simple. Cubaexport sells Cuban rum by the name of Havana Club around the world. They registered a trademark for Havana Club rum in the U.S. in 1976. In 1995, Bacardi created a different rum also called Havana Club and started selling it. 

From a pure trademark law standpoint, it would appear that Cubaexport is in the right and Bacardi is infringing upon their trademark. However, when international politics enter the picture, things often become far more complicated.

The Long and Winding History of Havana Club Rum

Havana Club rum was born in Cuba in 1934. For decades, it was sold by the conglomerate José Arechabala S.A., owned by the Arechabala family. However, in 1960 the Communist Cuban government seized assets from the Arechabala family, including Havana Club rum, and the state began making and selling the rum. 

The Arechabalas fled to Miami and attempted to resuscitate Havana Club rum, but in 1973 their trademark registration for Havana Club lapsed in the U.S. It was at that point that Cubaexport was able to register the Havana Club trademark in the U.S., which went into effect in 1976.

That is where things remained for almost 20 years, until Bacardi filed a trademark application for the Havana Club trademark in the U.S. in 1994. One year later, Bacardi bought the rights to the rum from the Arechabala family and started selling Havana Club rum in the U.S.

Since then, the facts have only gotten more complex, with Bacardi starting and stopping production of Havana Club rum multiple times while fighting to have Cubaexport’s trademark registration canceled. From 2007 to 2016, the case was paused after the USPTO decided to renew Cubaexport’s mark – something which resulted in Bacardi suing the USPTO itself. Then, in 2023, Cubaexport countersued Bacardi for trademark infringement. Which brings us to the present. 

You Can’t Accuse a Company of Infringement in the U.S. If Your Home Country Is Under an Embargo

This past October, U.S. District Judge Emmet Sullivan offered an unusually straightforward ruling. Quite simply, Cubaexport cannot even legally accuse Bacardi of infringement in the U.S., because Cuba is under a trade embargo. The claim was dismissed, and Bacardi was allowed to keep selling Havana Club rum for the foreseeable future.

So, is this the end of the trademark dispute over Havana Club rum? With competing international interests, an ever-changing political landscape, and lots of money involved, probably not. But the next big change is anyone’s guess.

Categories

Get in Touch with Us

This field is hidden when viewing the form
This field is hidden when viewing the form
This field is for validation purposes and should be left unchanged.

Archives

Marks Gray P.A.

Connect with Us