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Views From A Smoke-Filled Room
by Rich Perelman
Editor-in-Chief
Los Angeles, June 30 – In his 142-page decision in Empresa Cubana del Tabaco vs. Culbro Corporation and General Cigar Co., Inc., Federal District Judge Robert Sweet of the Southern District of New York dismissed nine of Cubatabaco’s 12 claims, noted that two others were not properly before him and granted the plaintiff judgement on the one remaining claim. The effect of that opinion, however, was to nullify General’s trademark registration of the Cohiba name and allow Cubatabaco’s claim of ownership of the trademark to prevail.
The decision was followed on May 26 by an order requiring General to refrain from all sales and marketing efforts for its Cohiba brand, effectively taking it off the market. Less than a month later, Sweet stayed his own order and allowed General to continue marketing and sales of Cohiba, pending appeal of the decision. What kind of smoke signal is that?
Maybe a recognition that the Cohiba matter is not at all settled.
Despite a lengthy trial, 1,500 exhibits and a mountain of expert testimony, my review of the decision leaves me unsatisfied. As an attorney by training, I was interested to see Judge Sweet balanced his findings of fact with the difficult legal tests for finding which side should own the right to use the name “Cohiba” on cigars sold in the United States. I think he missed some important points.
Not that Judge Sweet needs my input, but in his 54 pages of discussion, he applied the correct legal standards to an incomplete set of facts which clouds any kind of judgement of the actual conditions of the market for Cohiba cigars from Cuba (made by Cubatabaco) and from the Dominican Republic (made by General).
The test, as quoted by Sweet, requires that “Cubatabaco must establish both that (1) its mark is entitled to protection and that (2) General Cigar’s ‘use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods’” (numbering added).
Sweet wrote that Cubatabaco has a protectable mark in the Cohiba name because the name was well-known when General Cigar began marketing Cohiba, first as an unbanded cigar in the Alfred Dunhill stores and catalog in 1992 and then as the “red-dot” Cohiba we know today in 1997. Sweet noted that the name “Cohiba” had come to be “uniquely associated” with Cuba and was therefore protectable.
Are you kidding, Sweetie?
Such a finding overlooks the one aspect which makes the cigar business different from virtually any other on the planet: the dual registration and marketing of names of cigars sold from Cuba and those sold in the United States.
Montecristo, Partagas, El Rey del Mundo and more than a dozen other brands are made concurrently in Cuba and also in the Dominican Republic, Honduras and elsewhere. American cigar consumers are well trained in knowing the difference and General Cigar already participates in this area with its Hoyo de Monterrey, La Gloria Cubana, Partagas and Punch brands, among others. Why not Cohiba? ~ to be continued
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