Second Circuit set to hear COHIBA arguments this week

The fight over rights to the COHIBA trademark in the United States is expected to continue in the US Court of Appeals for the Second Circuit this week. The Second Circuit is scheduled to hear arguments tomorrow in Empresa Cubana del Tabaco v Culbro Corp (Case 04-2527) on the defendant's claim for a stay of a permanent injunction issued by the US District Court for the Southern District of New York pending its appeal to the Second Circuit of the district court's judgment.

In its decision in Empresa Cubana del Tabaco v Culbro Corp, 97 Civ 8399, on April 30 2004, the district court entered judgment for and issued a permanent injunction in favour of Cuban company Empresa Cubana del Tabaco (Cubatabaco) (see US COHIBA registrations stubbed out by Cuban company). In that order, the district court:

• ordered the cancellation of US company Culbro's trademark registrations for the COHIBA mark;
  
  
• permanently enjoined Culbro from using the COHIBA mark;
  
  
• ordered the destruction of, among other things, all merchandise and packaging bearing the COHIBA mark;
  
  
• ordered Culbro to advise its distributors and retailers not to identify Culbro's products as related to those previously labelled with the COHIBA mark; and
  
  
• ordered a recall of all products bearing the COHIBA mark.

The district court refused a stay of the permanent injunction pending appeal and instead stayed the cancellation and injunction for just 15 days. It found that:

• Culbro would not be irreparably injured absent a stay;
  
  
• there would be harm to Cubatabaco if the stay was granted;
  
  
• the public interest weighed in favour of maintaining the injunction; and
  
  
• Culbro had failed to show that it was likely to succeed on appeal.

The Second Circuit will now review the district court's order denying the stay of the injunction and will also review its judgment in favour of Cubatabaco. The rights to the COHIBA mark in the United States remain undecided.

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC