Bacardi's opposition to 'Havana Club' fails

Canada

In Bacardi & Company Limited v Havana Club Holding SA, the Federal Court of Canada has upheld a decision of the Canadian Intellectual Property Office (CIPO), rejecting the application by Bacardi & Company Limited to oppose the registration of 'Havana Club' as a word mark and design for rum.

Havana Club Holding SA applied for registration of 'Havana Club' on the basis of its use in Canada since at least 1990, by itself or its predecessor in title. Bacardi launched an opposition action on the grounds that the proposed mark was confusingly similar to the registered mark HAVANA CLUB.

Bacardi's argument was that although Havana Club Holding is listed on the register as the owner of the HAVANA CLUB trademark, the listing was of no legal effect. This was because in 1960 the Republic of Cuba nationalized the assets of various companies by forced expropriation, including those of José Arechabala, the original owner of the HAVANA CLUB mark in Canada. In 1963 the registrar changed the name of the owner to that of a nationalized Cuban company. Bacardi argued that "because nothing in the registrar's record indicates that compensation was paid to those affected by the forced expropriation", the 1963 substitution was invalid and therefore Havana Club Holding, which is the successor of the nationalized company, had not demonstrated ownership of the registered trademark. If Havana Club Holding was not the proper owner of the prior HAVANA CLUB mark, then it should not be entitled to register 'Havana Club' because the Canadian Trademarks Act does not permit registration of confusing trademarks unless they are owned by the same entity.

The CIPO Trademarks Opposition Board rejected Bacardi's opposition.

On appeal, the Federal Court upheld the board's decision. The court concurred with the board's finding that only the Federal Court has jurisdiction, pursuant to Section 57 of the Trademarks Act, to order that an entry in the register be struck out or amended on the grounds that the ownership was incorrectly recorded. Therefore, it concluded that the registrar had made no error in amending the register on the basis of the evidence presented to it. Also, there had been no proceedings taken to question the validity of the registration of the HAVANA CLUB mark until Bacardi's opposition action, even though a variety of other procedural avenues could have been followed. Lastly, the court pointed out that the only mark at issue in opposition proceedings is the mark that is the subject of the opposition. Thus, the registration for HAVANA CLUB was considered to be valid as entered on the register, and would continue to be considered valid unless and until amended or otherwise struck off. This would have to be addressed by a separate application to the Federal Court.

Accordingly, the appeal was dismissed with costs to Havana Club Holding.

For a further discussion of the effects of Cuban nationalization on trademarks - in particular the HAVANA CLUB mark, see US-Cuba Trademark Protection Act introduced to Congress.

David Wotherspoon, Fasken Martineau DuMoulin LLP, Vancouver

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