More on the Cohiba Trademark Case

From Rich Perelman at CigarCyclopedia:

Cubatabaco’s case against General Cigar’s ownership of the Cohiba name rests, essentially, on whether consumers are confused between the two makes. I say . . . not enough to make a difference.

Cigar expert Paul Garmirian, writing in his important book, The Gourmet Guide to Cigars (Cedar Publications, 1990): “How do cigar smokers make their selection of cigars? . . . The first thing they notice is the color of the box of cigars and how we associate it with a name: yellow for Montecristo, red for Partagas, green for Macanudo and so forth.” I posit that for Cohiba, packed in plain wood boxes, the recognition comes with the band. A Cuban Cohiba has a blue, white and yellow band with white dots on the blue field and a bold black “COHIBA” printed against a white background on the top half of the band. Not so the Dominican-made Cohiba of General Cigar.

The Dominican-made Cohiba band, as noted by Judge Robert Sweet (S.D.N.Y.), is quite different. With its black-striped edges, black COHIBA name on a white field and a rich, red dot inside the “o,” this brand is instantly recognizable as different from the Cuban version. In a market where the boxes and trade dress for Hoyo, Punch, Partagas, El Rey del Mundo, La Gloria Cubana, Montecristo. H. Upmann, Bolivar, Por Larranaga, Romeo y Julieta and others are virtually identical, it stretches the imagination to contend seriously that a cigar smoker of any experience would confuse the two.

Even the publicity in the cigar magazines, notably in the ratings pages, shows off the differences in the brands, not the similarities, thanks to the wildly different bands. Only the inexperienced smoker would be confused.

And no evidence was noted in the decision about the level of confusion between experienced smokers as against inexperienced smokers. Judge Sweet only notes that ads and descriptions about General’s Cohiba in 1997 refer to the Cuban-made version. Not surprising since the General-made version was new at that time. Judge Sweet’s reliance on market surveys taken in 1998 and 2000 is also unimpressive, as the fog of the Cigar Boom was just beginning to lift and there were hundreds of odd brands still on the market. Finally, he cites another case for the proposition that all consumers of expensive cigars are “discerning purchasers,” ignoring the entire Cigar Boom phenomenon of the mid-to-late 1990s. This is history being re-written in front of our eyes.

In my view, the likelihood of confusion between the Cuban-made Cohiba and General Cigar’s version was limited to new or inexperienced smokers in the 1997-2000 period and is less today than the confusion between Cuban-made and non-Cuban versions of the same brands such as Montecristo, H. Upmann and Romeo y Julieta.

The Second Circuit Court of Appeals should recognize the utterly unique, side-by-side market for cigars with identical brand names made inside and outside of Cuba which exists here in the United States. The Solomonic solution would be to order General Cigar to have bands on all of its Cohiba cigars, to refrain from ever using blue or gold coloring on such bands and to change its box format for its Cohiba brand to a paper-wrapped edition, similar perhaps to the style used by Montecristo or Rafael Gonzales.

More likely might be a remand to the District Court for further evidence on the level of confusion among different segments of cigar smokers, to better determine who was actually confused about Cohibas: smokers . . . or the Judge.

Posted on Friday, July 2nd, 2004 at 9:49 am.