Supreme Court Confirms General Cigar’s U.S. Ownership of COHIBA® Trademark

General Cigar U.S. Cohiba Logo The U.S. Supreme Court today denied review of a lower court ruling that, in the absence of specific U.S. government permission, the U.S. blockade of Cuban products bars the official Cuban tobacco company Cubatabaco from obtaining judicial protection of its COHIBA trademark in the United States.

As a result of the Supreme Court’s ruling, the February 2005 decision of a United States Circuit Court of Appeals, which confirmed General Cigar Company’s exclusive ownership of the COHIBA® mark in the United States, is final and is law of the case.

Cuban Cohiba Logo Cubatabaco announced in response that it will continue to fight for the rights to the COHIBA trademark in the United States. COHIBA is Cuba’s most renowned cigar brand, but cannot be sold in the U.S. because of the U.S. economic, commercial and financial blockade against Cuba.

The Cuban company will now pursue its pending application for U.S. government permission for judicial protection of the brand from the Treasury Department’s Office of Foreign Assets Control, which administers the U.S. blockade. In its amicus curiae brief filed in the Supreme Court, the United States specifically acknowledged that Cubatabaco could pursue this option.

Gerry Roerty, vice president and general counsel of General Cigar, commented, “Today’s ruling affirms what we have believed all along: That Cubatabaco had no standing to challenge General Cigar’s ownership of the COHIBA® mark in the United States. Now that the Supreme Court has confirmed that General Cigar is the only legitimate owner of the Cohiba brand in the United States, we will enhance our ongoing nationwide initiatives against manufacturers, distributors and retailers of counterfeit COHIBA® cigars.”

General Cigar received its first registration of the COHIBA® trademark in the United States in 1981, and obtained an updated registration in 1995. The company has been selling its Dominican COHIBA® cigar in the United States for more than two decades.

Cubatabaco filed the lawsuit in 1997 against General Cigar, claiming rights to the COHIBA® name in the United States under U.S. law and international treaties, although Cubatabaco had failed to take any legal action against General Cigar for nearly 20 years.

In April of 2004, Judge Robert W. Sweet, of the United States District Court in New York, issued a judgment in Cubatabaco’s favor. He found that that the Cuban COHIBA was “famous” among U.S. consumers before General Cigar began using the trademark.

Without comment on the merits of Judge Sweet’s ruling, the Court of Appeals in New York vacated the district court judgment on the ground that a U.S. government license was needed to grant relief to Cubatabaco. Today’s action by the U.S. Supreme Court lets stand the Court of Appeals decision.

In seeking U.S. government permission, Cubatabaco will emphasize the United States’ international obligations to protect “well-known” trademarks, such as COHIBA, under the Paris Convention for the Protection of Industrial Property, a multilateral treaty, and TRIPs, a WTO agreement. Cubatabaco will also emphasize reciprocity: Cuba has permitted hundreds of U.S. companies to register and maintain over 5,000 trademarks in Cuba.

The General Cigar Co. COHIBA® line of premium cigars is handcrafted in the Dominican Republic and is a favorite among cigar connoisseurs. In addition to the COHIBA® hallmark line, General Cigar manufactures and markets COHIBA® XV which was introduced in 2001. The Cuban COHIBA is generally considered Cuba’s finest cigar, is made entirely of Cuban-grown tobacco, and consistently attains the highest ratings in U.S. cigar publications.

General Cigar Co., Inc. is a subsidiary of Swedish Match, and manufactures and markets handcrafted cigars for the premium market. The company grows its own premium Connecticut Shade wrapper tobacco, as well as natural and candela wrapper in the Dominican Republic. General Cigar also operates Club Macanudo®, a cigar bar in New York City.

Posted on Monday, June 19th, 2006 at 6:51 pm.