Cohiba Vs. Cohiba: Another Win For Cuba
The legal battle for Cohiba, Cuba’s flagship luxury cigar brand, has been going on for nearly 30 years, and a judgement has just gone in favor of the Cubans—again.
This most recent ruling is a result of a suit in 2022, which ruled to cancel General’s Cohiba trademark registration in the United States. Yesterday, General lost the case.
General Cigar currently sells many non-Cuban versions of the Cohiba cigar brand in the United States, where Cuban Cohibas cannot legally be sold. Cuban company Cubatabaco, which owns the Cohiba name and the rights to market Cohiba internationally, challenged the legality of the U.S. trademark and first filed suit in January 1997. The case has been in litigation ever since with losses and victories for both sides.
Judge Leonie M. Brinkema of the United States District Court for the Eastern District of Virginia upheld the TTAB’s 2022 decision to cancel General’s use of the Cohiba trademark, an issue that’s been in contention since the Clinton istration. According to the judge, Cubatabaco’s trademark was protected under the Inter-American Convention (IAC), a 1929 law that protects international trademarks. The court ruling reads:
“Because the Court finds that Cubatabaco has established that the TTAB’s cancellation of General Cigar’s registrations was proper under Article 8 of the Inter-American Convention (IAC) and that the Cuban Assets Control Regulations do not prohibit such cancellation, General Cigar’s requested relief will be denied and its Amended Complaint will be dismissed without prejudice.”
According to the legal document, Cubatabaco applied for the Cohiba trademark in September 1969 and was granted registration on May 31, 1972. Nearly six years later, on March 13, 1978, General Cigar applied to Cohiba with the United States Patent and Trademark Office (USPTO). Registration was issued on February 17, 1981. One of General Cigar’s primary arguments in the suit was the claim that Cuba allowed the Cohiba trademark to lapse from non-usage in the 1970s, but the court rejected this notion. An article published in Forbes magazine in 1977—presented as evidence by the Cubans—states the existence and use of a Cohiba brand. The fact that Cohiba cigars were disseminated noncommercially at the time (as diplomatic gifts, as Fidel Castro’s personal brand, etc.) was deemed irrelevant—the trademark was still protected. Cohiba was released commercially by the Cubans in 1982.
“Because. . . General Cigar had knowledge of Cubatabaco’s use of ‘Cohiba’ for cigars in Cuba, the Court finds that the TTAB validly cancelled General Cigar’s registration under Article 8 of the IAC,” the ruling states.
So what does this mean for General? Does the company have to now cease production and sale of its Cohiba cigars? That doesn’t seem likely. In addition to this suit, General has a pending appeal with the TTAB that has yet to be resolved. The appeal was filed in 2023 as well. According to a statement from General issued today, the company will also consider appealing yesterday’s decision.
“We are of course disappointed by this decision,” says Régis Broersma, chief commercial officer of Scandinavian Tobacco Group, the owner of General Cigar Co., “but we and our advisors will now study the ruling closely and of course consider the opportunity to appeal to the U.S. Court of Appeals for the Fourth Circuit. Our federal trademark registrations which are the subject of the dispute, would remain valid and enforceable during a pending appeal. We expect the long dispute to continue before the courts.”
Furthermore, General added that the recent ruling “deals with the federal trademark registrations and does not impact General Cigar Co.’s common law trademark rights based on its long use of the Cohiba mark on its cigars marketed and sold in the U.S. These trademark rights remain valid and enforceable irrespective of the current dispute.”
Habanos S.A. has yet to issue a statement, but fans of non-Cuban Cohibas don’t need to worry, as it appears that these cigars won’t be disappearing from retail shelves any time soon.
For a complete timeline of the Cohiba case and its back-and-forth legal decisions since 1997, click here.
