Cubatabaco granted US trademark rights to Cohiba after prolonged legal dispute

USA. Empresa Cubana del Tabaco (Cubatabaco) has prevailed in its long-running legal battle against General Cigar, with a US District Court ruling in its favour over the US trademark rights to Cohiba cigars.

The US District Court for the Eastern District of Virginia, in a ruling issued by Judge Leonie M. Brinkema, upheld the US Trademark Trial and Appeal Board’s decision to invalidate General Cigar’s Cohiba trademark registrations following proceedings initiated by Cubatabaco.

The removal of General Cigar’s registrations allows Cubatabaco to register Cohiba in the USA.

The ruling established that the leading US cigar company knew about Cubatabaco’s use of Cohiba when it registered the name in March 1978. Key evidence included internal memos describing Cohiba as a pre-existing ‘brand in Cuba’ and ‘Castro’s cigar’.

The decision was based on the Pan-American Convention, a treaty ratified by both Cuba and the USA, which requires the cancellation of a trademark if the applicant knew it was previously used in another member country.

Cubatabaco Legal Director Lisset Fernández García said, “We are pleased that Judge Brinkema, like the US Trademark Board, was willing to recognise and enforce the treaty rights of Cubatabaco, a Cuban company, even though the US embargo currently prevents the sale of Cuban cigars in the United States.

“It has vindicated our position that, all along, the rights to Cohiba rightfully belong to the Cuban company.”

The legal dispute between Cubatabaco and General Cigar over the Cohiba trademark in the USA began in 1997 and has spanned 20 years through extended proceedings in both the federal courts and the Trademark Board.

Michael Krinsky of Rabinowitz Boudin Standard Krinsky & Lieberman, P.C., a New York law firm, is lead counsel for Cubatabaco. Natasha Reed of Foley Hoag LLP and Benjamin Hatch of McGuireWoods LLP serve as co-counsel.