Bacardi Loses Their Struggle For the “Habana Club” Trademark

18 February 2011

After more than a decade of controversy, the Spanish Supreme Court finally upheld the rulings of the Courts of First and Second Instance confirming the rights of the Franco-Cuban joint venture to the “Habana Club” trademark. The court rejected the merits of the lawsuit relating to the “Habana Club” trademark registration filed against Pernod Ricard and the Cuban state-owned company Cuba-Ron, and established that Bacardi does not hold trademark rights over the distinctive symbol.

The High Court based their ruling on the fact that the statute of limitations on the action to restore the parties to the original position, which had been filed along with the request for declaration of invalidity, had expired by the filing date. The appellants Spanish Supreme Court appeal was thus dismissed. The high court confirmed the criteria of the Provincial Court of Madrid that had held that that action entailed a claim for a Spanish court order and that it was time barred by the period of fifteen years stipulated in the Spanish Civil Code. For calculation purposes, the first day of this period is the day following the registry entry of ownership of the disputed trademark (14/09/1968). The Judge ruled that since said date, the defendants had not acknowledged any rights of the claimants and, furthermore, the claimants inactivity led to the 1993 expiration of the action to restore the parties to the original position. Consequently, the Supreme Court ruled that the Provincial Court decision was correct in their conclusions and therefore rejected Bacardi’s claims and dismissed the high court appeal.

For further information, please contact Eric Jordi: ejordi@mmmm.es