Bacardi Limited, a privately held company and producer of spirits and wines, has filed an amendment complaint with the U.S. District Court for the District of Columbia in an ongoing effort to defend its rights and ownership of the Havana Club rum brand and trademark in the country.

This filing amends the original complaint Bacardi filed in March 2004 under the Lanham Act (also known as the Trademark Act of 1946), the federal statute that governs trademarks, service marks, and unfair competition.

The defendants in the complaint are Cubaexport, an agency of the Cuban government, and Havana Club Holding, the joint venture company between the Government of Cuba and Pernod Ricard – the second largest spirits company in the world.

With this filing, Bacardi has urged the court for the cancellation of the Cuban government’s Havana Club trademark registration in the US Patent & Trademark Office based on, among other things, the Administration’s fraud in obtaining the original filing.

Bacardi has also sought a declaration that it has common law rights in the mark based on distribution and sales of Havana Club branded products in the US.

Bacardi obtained the rights to the mark through a lawful and U.S. Office of Foreign Assets Control-licensed transaction with the brands original owner and creator Jose Arechabala.

Bacardi senior vice president for external affairs in the US Rick Wilson said: "We are extremely disappointed to have to resort to using the precious time and resources of the U.S. justice system due to the failure of the U.S. government in following established legal and public policy protecting the rights of those who have suffered confiscations of property.

"A ‘let the courts decide’ mentality is not the way to go when, for decades, the Cuban government and its business partner intentionally and knowingly concealed and misrepresented to the PTO the pertinent facts that have undermined its claims as the lawful owner of the mark in order to deceive the PTO and maintain the registration."

Pernod Ricard general counsel Ian FitzSimons was quoted by The Spirits Business as saying: "We are confident that Cubaexport will prevail in defending its registration in the pending litigation. Cubaexport has been the registered owner of the Havana Club trademark in the US since 1976, and owns the rights to the Havana Club trademark everywhere it is sold around the world. We look forward to letting the Court decide the case on the merits."

The timing of the trademark renewal follows the December 2014 move by the US and Cuban governments to start to ‘normalise’ diplomatic relations.