The Havana Club trademark dispute is a decades-long fight over who may sell rum under that name in the United States, and it currently sits between two claimants: Bacardi, which bought the brand and original recipe from the Arechabala family in the mid-1990s, and Cubaexport, a Cuban state entity that registered the name in the U.S. in 1976 and now partners with Pernod Ricard. The U.S. market remains contested because federal law, Treasury licensing, and international trade rulings each pull the answer in different directions.
Where Each Side’s Claim Comes From
The Arechabala family created the Havana Club brand in 1934. In 1960, the Cuban government seized their distillery, Jose Arechabala S.A., without compensation, and the family left the country. The original U.S. trademark lapsed in the 1970s.1USPTO. USPTO Statement – Havana Club Trademark
Cubaexport registered the name in the United States in 1976. That registration is the foundation of the joint venture between the Cuban government and Pernod Ricard, which produces and markets Havana Club rum outside the United States. Pernod Ricard maintains that the registration was acquired legally through standard international procedures.
Bacardi bought the brand rights and the original recipe from the Arechabala family in the mid-1990s and argues that the Cuban government’s claim rests on an illegal seizure of intellectual property. The two positions have never been reconciled, and the U.S. market is where they collide.
How Section 211 Affects the Claims
Section 211 of the 1998 Omnibus Appropriations Act addresses the registration and renewal of trademarks that are the same as or very similar to brands used by businesses confiscated in Cuba.2Cornell Law School. 31 C.F.R. § 515.527 It prevents U.S. courts and agencies from recognizing certain trademark rights tied to those seizures when the party claiming the mark knew or had reason to know it was taken without compensation.3Congress.gov. Public Law 118-137
For a trademark in this category to be authorized, the original owner or their legal successor must give express consent.2Cornell Law School. 31 C.F.R. § 515.527 That rule also governs authorization for fee payments and related transactions.
The USPTO Registration Fight
Because dealings with Cuban entities are governed by the Trading with the Enemy Act, maintaining the Havana Club registration requires a Treasury license to pay fees.4Federal Register. 89 FR 46304 In 2006, the U.S. Patent and Trademark Office was unable to renew the Cubaexport registration because Treasury did not issue that license, and the renewal was refused.1USPTO. USPTO Statement – Havana Club Trademark
The situation reversed in 2016, when the Office of Foreign Assets Control issued a new license that allowed Cubaexport to supplement its renewal application and complete the process.1USPTO. USPTO Statement – Havana Club Trademark The USPTO updated its records to reflect the revived registration, and Bacardi responded with petitions for cancellation. Those challenges question the procedural deadlines and the validity of the Treasury license, and they remain before the Trademark Trial and Appeal Board. Its decision will determine which entity holds the official federal registration.
The WTO Ruling and the 2024 Amendment
The European Union challenged Section 211 at the World Trade Organization in the dispute known as DS176. The WTO found that parts of the statute were inconsistent with global trade obligations, specifically the requirement that countries treat foreign trademark holders as favorably as their own nationals.5World Trade Organization. WTO Dispute DS176
In December 2024, Congress passed an amendment updating the trademark rules. It expanded the restrictions to reach executive branch agencies, including the USPTO, and clarified the conditions under which property rights tied to confiscated Cuban assets are recognized.3Congress.gov. Public Law 118-137 The European Union continues to monitor the effect on foreign trademark holders and on trade relations with the United States.