US COHIBA registrations stubbed out by Cuban company

Despite the trade embargo between the United States and Cuba, Cuban companies continue to defend their trademark rights vigorously in the United States. In Empresa Cubana Del Tabaco v Culbro Corp (2004 US Dist LEXIS 4935), the US District Court for the Southern District of New York has ordered the cancellation of the defendant's US registered COHIBA marks for cigars on the grounds that they infringed the plaintiff's well-known COHIBA mark for the same type of goods.

In 1970 Empresa Cubana Del Tabaco (Cubatabaco) began manufacturing and selling Cohiba brand cigars. Cubatabaco launched its Cohiba brand internationally in 1982 and has now registered the COHIBA trademark in 115 countries. Culbro Corp, a US company, is the corporate parent of General Cigar. After becoming aware of the rise in popularity of the Cuban Cohiba brand, General Cigar took steps to acquire rights to the COHIBA mark in the United States. Among other things, it:

• registered the mark in the United States, indicating to the US Patent and Trademark Office that COHIBA had no meaning in the relevant industry and that it was "wholly arbitrary";
  
  
• launched a new premium cigar under the COHIBA mark in response to acclaim received by the Cuban Cohiba brand;
  
  
• filed a second COHIBA application basing its block letter drawing on a photocopy of the Cuban COHIBA-marked box;
  
  
• created advertising themes that evoked an association with Cuba; and
  
  
• took no steps to correct major retailers' misstatements that the two parties' Cohiba brands were related.

When Cubatabaco learned of the existence of the US COHIBA registrations, it filed a petition with the US District Court for the Southern District of New York to cancel General Cigar's COHIBA marks. It alleged trademark and trade dress infringement in violation of Section 43(a) of the Lanham Act.

The court found that although Cubatabaco's COHIBA mark is only used on products sold abroad, the mark is famous in the United States and is thus protectable. Specifically, it found that Cubatabaco's Cohiba brand had a reputation as "one of the best cigars in the world". Evidence of fame included General Cigar's adoption of the COHIBA mark and its launch of a Cohiba brand to capitalize on the acclaim received by the Cuban brand of cigars. After analyzing the factors for determining likelihood of confusion, the court held that the unique circumstances of the Cuban embargo notwithstanding, there was a likelihood of confusion between the Cuban and the General Cigar COHIBA-marked products.

It also noted that General Cigar clearly had knowledge of the Cuban COHIBA mark prior to adopting that mark in the United States. The court held that General Cigar's conduct regarding the brand name Cohiba constituted wilful trademark and trade dress infringement, despite a finding that Cubatabaco:

• could not sell cigars in the United States because of the trade embargo;
  
  
• had not registered the trademark when General Cigar stopped selling its cigars under the COHIBA mark; and
  
  
• did not object to General Cigar's application to register the COHIBA mark in the United States.

Accordingly, General Cigar's trademark registrations for COHIBA were cancelled and it was permanently enjoined from using the COHIBA mark.

For a discussion of another victory for a Cuban company in the United States, see Bacardi fails to cancel HAVANA CLUB mark.

Howard Shire and Katrina D Rainey, Kenyon & Kenyon, New York