Cuba loses fight to competitor over its trademark cigar

Posted on Wed, Jun. 21, 2006

U.S. SUPREME COURT
Cuba loses fight to competitor over its trademark cigar

BY FRANCES ROBLES
frobles@MiamiHerald.com

The U.S. Supreme Court has rejected the Cuban government's nine-year
legal quest to snuff out that other Cohiba: the Dominican-made stogie
sold by an American company.

The Supreme Court Monday let stand a New York appellate court ruling
that the U.S. embargo prevents Cuba from obtaining a U.S. registry for
its famous Cohiba trademark, cigars long favored by aficionados and even
Fidel Castro until he stopped smoking years ago.

But the Cuban cigar company Cubatabaco says it's not giving up and will
press the U.S. Department of Treasury for a license that would allow
Cuba to register the trademark here. Since the embargo is the only legal
obstacle for Cuba, the Treasury license would give Havana grounds to
relaunch its court battle, Cubatabaco attorney David Goldstein said.

Although most people think of Cohiba as a Cuban cigar first made in
1966, a stogie by the same name has been manufactured in the Dominican
Republic and sold in the United States dating back 25 years. It is the
only Cohiba that's legal to buy in the United States.

General Cigar Co. first registered the Cohiba name in the United States
in 1981. But cigar sales were lackluster back then, and the company did
little with the famed name.

All that changed in 1992, when Cigar Aficionado magazine extolled the
wonders of the Cuban Cohiba. General Cigar quickly filed to renew its
trademark and in 1997 -- with the cigar business booming -- rolled out a
new campaign plugging its own Cohibas made from Dominican leaves.

''We had that brand for more than 20 years, and Cuba didn't say a
word,'' said General Cigar spokeswoman Victoria McKee. ``They are two
different cigars.''

General Cigar uses a logo with a red dot in the O of Cohiba, an emblem
different from the well-known yellow and black checker board used by the
Cuban company.

But the Cuban cigar company cried foul, saying General Cigar was
deliberately trying to trick consumers into thinking they were smoking
the famous Cuban cigars.

'We acted in good faith at all times,' said General Cigar attorney
Ignacio Sánchez.

Cubatabaco sued General Cigar Co. in 1997 in a New York federal court.
The Cubans argued that Cohiba's famous name should trump General Cigar's
trademark registration. A New York federal judge agreed in 2004 and
ordered General Cigar to quit using the name. But General Cigar
successfully appealed on the embargo argument.

''General Cigar intentionally exploited the Cohiba theme, and the trial
judge agreed,'' Goldstein said. ``We will continue to pursue our
application for a license.''

The Cubans say the United States has a broad obligation to protect
''well-known'' trademarks under the Paris Convention and other treaties.

The company added that hundreds of American companies have more than
5,000 trademarks registered in Cuba,in spite of the U.S. sanctions.

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