A Case of Cuban Rum and Politics Meets Canadian Trade-mark Practice

The case of Bacardi & Company Limited v Havana Club Holdings SA involved a chain of historical events dealing with the Castro regime and the registration for a Canadian trade-mark, HAVANA CLUB. The mark HAVANA CLUB was registered in Canada in 1934 by Jose Arechabala SA (JASA), a Cuban company, for use in association with rum. In 1960, the Castro regime came to power and nationalized the assets of various Cuban companies, including those of JASA. As a result, JASA asked the Registrar to record the name of the nationalized company, Jose Arechabala SA Nacionalizada (Nacionalizada), against the registration. The Registrar amended the register accordingly. Havana Club Holdings SA (Havana Club), a successor-in-title to Nacionalizada and now the owner of the trade-mark, applied to register several more HAVANA CLUB marks. Barcardi opposed Havana Club's applications. It argued that the Registrar had no authority to record Nacionalizada as owner of the HAVANA CLUB registration in 1963, since Cuban law nationalizing assets in that country had no effect in Canada. Bacardi asserted that because the change in ownership of the registered mark was invalid, the registration was still owned by JASA and not Havana Club. Barcardi claimed that Havana Club could not register the new marks as they would be confusing with the existing registration. The Registrar admitted that it had acted inappropriately in granting the 1963 amendment, but ruled that it had no power to correct errors on the register. The Registrar dismissed the opposition. Barcardi's appeals to the Federal Court (Trial Division) and the Federal Court of Appeal were subsequently dismissed as well. The Federal Court of Appeal narrowed the issue to a simple question of the statutory jurisdiction of the Registrar, holding that the Registrar had no power to make any amendments to the register in the context of an opposition proceeding and, as a result, the Registrar was correct in dismissing the opposition. In response to Barcardi's arguments about the effect of Cuba's confiscatory laws in Canada, the Federal Court noted this: "No matter how fascinating, the conflict of laws analysis is of no import in the current context." For the full reasons for judgment, see: http://decisions.fca-caf.gc.ca/fca/2004/2004fca220.shtml. Summary by: Hung Nguyen