HAVANA CLUB HOLDING SA AND CORPORACION CUBA RON S.A. V 1872 HOLDINGS, V.O.F. [2016] ATMO 37 (21 JUNE 2016)

1872 Holdings applied to register the following trade marks for alcoholic beverages, including rum:

  • MATUSALEM THE SPIRIT OF CUBA LIBRE
  • MATUSALEM EL ESPIRITU DE CUBA
  • MATUSALEM EL ESPIRITU DE CUBA LIBRE

The main ground pressed and considered by the Hearing Officer was section 61 that the applications are for trade marks that contain a false geographical indication.

The opponent submitted, and supported by way of evidence, that CUBA is a recognised geographical indication in relation to rums with several Decree-Acts and Regulations relating to the use of CUBA in relation to rums.

It did not appear to be disputed by the applicant that CUBA is a geographical indication in respect of rum. Rather, the applicant argued that its overall trade marks would be unlikely to be seen by Australian consumers are referring to goods that contain rum originating from Cuba.

The Hearing Officer’s view was that all three of the applicant’s marks clearly refer to Cuba in a manner that indicates ‘that an Australian consumer would know that Cuba is a famous producer of rum and link Cuba’s reputation with producing rum to the word CUBA on a bottle of rum and believe that the rum originated from Cuba’.

The applicant also argued that its goods are clearly marked as being a product of the Dominican Republic and not Cuba and that this would prevent any confusion amongst Australian consumers as to the origin of the goods. This argument failed for two reasons; first, the applicant has not applied to register its labels that include that wording, and secondly, the opponent led evidence of actual marketplace confusion as to the origin of the applicant’s rum.

Ultimately, the Hearing Officer was satisfied that confusion would be likely at arise (particularly given that confusion had already arisen) and the applications refused registration.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.