A federal court in the United States ruled last Thursday in favor of the Cuban tobacco entity, Empresa Cubana del Tabaco (Cubatabaco), in a long-standing legal battle against the American company General Cigar over the rights to the Cohiba trademark in the U.S. The decision was handed down by Judge Leonie M. Brinkema of the Eastern District of Virginia, confirming the cancellation of General Cigar's Cohiba trademarks. This ruling aligns with a previous decision by the United States Trademark Trial and Appeal Board (TTAB), as reported by Habanos S.A.'s official website.
The court dismissed with prejudice General Cigar's attempt to overturn this decision, paving the way for Cubatabaco to register the Cohiba trademark in the United States. However, the ongoing embargo prevents the legal sale of Cuban cigars in the country. According to the ruling, General Cigar was aware that the Cohiba brand was already in use in Cuba when it applied for registration in the U.S. in 1978. Internal documents uncovered by Cubatabaco revealed that the American company referred to the brand as a "Cuba brand" and "Castro's cigar."
In its decision, the court applied the Pan American Convention, a treaty signed by both Cuba and the United States, which mandates the cancellation of a trademark if it was already in use in another member country at the time of application. It was determined that General Cigar acted with prior knowledge of the Cohiba brand's existence in Cuba.
Lisset Fernández García, a representative from Cubatabaco, expressed satisfaction with the ruling, emphasizing that despite the embargo prohibiting the sale of Cuban cigars on U.S. soil, the legal recognition of the brand's ownership is a triumph for the Cuban regime. "This confirms our stance that, from the outset, the rights to Cohiba rightfully belong to the Cuban company," she stated.
The legal dispute between Cubatabaco and General Cigar dates back to 1997, when proceedings began before the Trademark Board. Since then, the case has navigated over two decades of legal battles in U.S. federal and administrative courts, amidst an adverse political climate for the Cuban regime's economic interests.
Cubatabaco's legal team was led by attorney Michael Krinsky from the firm Rabinowitz Boudin Standard Krinsky & Lieberman, with support from Natasha Reed (Foley Hoag LLP) and Benjamin Hatch (McGuireWoods LLP). Although the Cohiba brand has long been a symbol of Cuban tobacco and the regime globally, its use and commercialization in the U.S. have been contentious. American consumers have accessed "Cohiba" cigars manufactured outside the island, causing confusion and unfair competition from the Cuban government's perspective.
General Cigar's Next Steps in the Ongoing Legal Battle
Despite this legal victory for Cuba, there is no immediate commercial impact due to the embargo's restrictions. General Cigar plans to appeal the ruling, and the litigation over Cohiba remains unresolved. The favorable verdict for Cubatabaco stems from a lawsuit filed in February 2023 by General Cigar Company, attempting to overturn a previous TTAB ruling in 2022 that ordered the cancellation of its Cohiba trademark registrations in the U.S.
The latest ruling by federal judge Leonie M. Brinkema reaffirms the TTAB's previous decision, based on the 1929 Inter-American Convention, which protects trademarks registered in other member countries, according to an AFP report. However, the agency noted that General Cigar intends to appeal the decision again before the TTAB, indicating that the legal conflict is not entirely resolved.
Despite the U.S. embargo restrictions, Cuban cigar exports reached a record $827 million in 2024, marking a 16% increase, primarily driven by the Asian market, according to official figures. The Cohiba brand, established in 1966, derives its name from the term used by the Taíno indigenous people to describe the tobacco leaves they smoked, which astonished Europeans upon their arrival in the Americas. It was also the personal brand of Cuban leader Fidel Castro, who smoked Cohibas for years until quitting the habit in 1985.
Key Questions About the Cohiba Trademark Dispute
Why was the Cohiba trademark dispute significant for Cuba?
The dispute was significant because it involved the recognition of the Cohiba brand's ownership rights, which are closely tied to Cuba's national identity and economic interests. The ruling affirms Cuba's legal rights to the brand, despite the ongoing U.S. embargo.
What legal basis was used to rule in favor of Cubatabaco?
The court's decision relied on the Pan American Convention, which mandates the cancellation of a trademark if it was already in use in another member country at the time of application. It was determined that General Cigar knew of the Cohiba brand's prior use in Cuba.
What are the implications of the ruling for General Cigar?
The ruling cancels General Cigar's registrations for the Cohiba trademark, but the company plans to appeal the decision. This ongoing legal battle highlights the complexities of international trademark disputes amid political tensions.