HAVANA cannot be trademarked for alcoholic drinks

On June 8 2011 the Maritime and Commercial Court ruled on whether the designation HAVANA could be trademarked, in particular in relation to alcoholic drinks.
Havana Club Holding SA was established in 1993 as a joint venture between the companies Pernod Ricard of France and Havana Rum and Liquors of Cuba. Since 1995 Pernod Ricard Denmark A/S has been acting in Denmark as Havana Club Holding's distributor of Cuban rum under the trademark HAVANA CLUB. Havana Club Holding is the owner of a number of trademarks, including HAVANA CLUB in Class 33 of the Nice Classification, valid in Denmark from 1969, and the Community trademark HAVANA CLUB in Class 33, with priority from 2006.
DK International is a Danish company established in 2000. For a number of years it has been trading in products such as juice and iced tea in Scandinavia. In 2010 the range was expanded to include beer, cider and long drinks as both convenience goods and special commerce. DK International sold and marketed the following products:
  • Havana Mojito Long Drink, which is manufactured with a wine base and the addition of juice concentrate and lemon; and
  • Havana Mai Tai Long Drink, which is manufactured with an apple wine base and the addition of gin and mai-tai flavouring.
The products are ready to drink and marketed in 33-centilitre cans with an alcohol content of 5.6%.
Following the change in products, Havana Club Holding and Pernod sued DK International, claiming that the use of the designation HAVANA was contrary to their trademark rights.
The court did not agree with the plaintiffs' argument that the trademark HAVANA CLUB was well known in Denmark. The plaintiffs had produced market research showing that 67% of rum-drinking consumers had aided knowledge to the trademark and 21% of the same rum-drinking consumers had unaided knowledge of the trademark.
Additionally, in the opinion of the court, it is not possible to obtain a sole right to the word 'Havana' for rum-based drinks. The court therefore found for DK International and ordered Havana Club and Pernod to pay DKr30,000 in costs.
Mads Marstrand-Jørgensen, Norsker & Co, Copenhagen

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