Court to Decide U.S.-Cuba Cohiba Dispute

New York - Legal ownership of the Cohiba brand in the U.S. will be decided in a New York courtroom, following a trademark infringement lawsuit brought by state-owned Empresa Cubana del Tabaco (Cubatabaco) against New York-based General Cigar Holdings Inc.

Nick Simeonidis, senior vice-president and general counsel for General Cigar, said the case was originally supposed to be heard last October, but it’s been delayed and isn’t likely to come to trial until April .

Both sides had moved for summary judgement since no material issues of fact were in dispute, but that motion was denied last summer by Judge Robert Sweet of the Southern District of New York.

“In sum, we’re arguing that we own the trademark,” said Simeonidis in a phone interview. “Cubatabaco knew about this for years and years, and didn’t do anything about it until very late - too late in fact.”

The Cohiba brand, created in 1965 by Che Guevara, was the first cigar brand established by the Castro government following the 1959 revolution. A super-premium cigar for Castro’s private use, it was given out to heads of state and other VIPs. Thanks to their relative scarcity, Cohibas attained a cult status among cigar lovers and, by the early 1970s, were on sale in some Cuban cigar shops. In 1982, Cuba began exporting Cohibas to Europe, where they were an instant hit.

General Cigar first registered the Cohiba name in the United States in 1978, and since the 1980s has been making Cohibas at its factory in the Dominican Republic. The popular “red dot” Cohiba was introduced in 1997.

“Cohiba is now a very well-known brand for General Cigar,” Simeonidis told Smokeshop.

In February 1997, Cuba attempted to cancel General’s trademark with the U.S. Patent and Trademark Office, but suspended that action when it sued Culbro Corp., the former parent of General Cigar, later that year, accusing Culbro of trademark infringement and false designation of source of origin, among other allegations. In January 1998, the parties agreed to attempt to settle out of court.

But in 2001, Judge Sweet found that General Cigar’s first registration of the Cohiba trademark had been abandoned in the 1980s, and that the case should be resolved on the basis of its second registration in 1992.

The judge also dismissed Cubatabaco’s claims of ownership to the trademark based upon two intellectual property treaties.

“Cubatabaco is trying to make the claim that somehow our registration should be cancelled,” said Simeonidis. “If that were the case, then no one would be able to sell a Cohiba in the U.S. But we don’t think that will happen.”
- Luxner