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Cuba loses bid to stop
U.S. firm from using famous Cohiba name
on cigars
By Doreen Hemlock. South
Florida Sun-Sentinel,
June 20 2006.
The U.S. Supreme Court on Monday stubbed
out a case over rights to the Cohiba brand
name on cigars sold in the United States,
upholding the rights of a New York company
to use the name on products it makes outside
Cuba.
Monday's decision not to hear a Cuban appeal
basically allows recent rules on the U.S.
trade embargo against Cuba to trump an older
international treaty on trademarks, lawyers
said. Washington has banned most U.S. trade
with communist-led Cuba since the 1960s.
Bolstered by the decision, U.S. trademark
holder General Cigar Co. said it will crack
down in the United States "against
manufacturers, distributors and retailers
of counterfeit Cohiba cigars," including
cigars made in Cuba and those with fake
Cohiba labels. General Cigar makes its Cohibas
in the Dominican Republic.
But Cuba's government-owned tobacco company,
Cubatabaco, said it would keep up the fight
and take its request to the U.S. Treasury
Department's Office of Foreign Assets Controls,
which oversees the U.S. trade embargo.
"Cubatabaco especially emphasizes
that the United States is obligated by international
treaties and the World Trade Organization
agreement to protect well-known brands like
Cohiba," the company said in a statement
from Havana.
Cuba grants trademark protection to more
than 5,000 U.S. brands, Cubatabaco added.
Some U.S. lawyers worried the Supreme Court
decision could backfire, prompting Cuba
to retaliate against U.S. trademarks registered
on the island.
"My concern is whether they'll retroactively
assail U.S. marks," said attorney Jorge
Espinosa of Kluger Peretz Kaplan Berlin
law firm in Miami, who has registered U.S.
brands on the island.
At the heart of the case is the right to
use a cigar name long associated with premium
quality and Cuba's leader Fidel Castro himself.
General Cigar registered the Cohiba name
in the United States in 1981 and updated
its registration in 1995. It has been selling
Dominican-made Cohibas for decades.
Cubatabaco sued in 1997, claiming rights
to the name under U.S. law and international
treaty. It argued the Cohiba name resonates
with U.S. consumers -- as a premium Cuban
cigar, even though the U.S. embargo bars
Cuban products from entering the United
States.
Cubatabaco has registered the Cohiba trade
name in 115 other countries and sells the
brand worldwide, except in the United States.
In 2004, a judge in New York barred General
Cigar from using the Cohiba name, saying
Cubatabaco gained rights during a five-year
period when General Cigar dropped the brand.
The judge cited stories about the Cuban-made
cigars in U.S. magazines, saying the publicity
helped make Cohiba a "famous"
mark, owned by Cubatabaco.
But last year, the New York-based 2nd U.S.
Circuit Court of Appeals reversed the ruling.
The panel argued that under U.S. trademark
law, Cubatabaco couldn't acquire rights
through publicity while the U.S. trade embargo
was in place.
Cubatabaco appealed to the Supreme Court
-- to no avail. The Bush administration
had recommended the Supreme Court not consider
an appeal.
Cigar smokers can distinguish between the
Dominican and Cuban versions of the brands,
however.
General Cigar, owned since 2000 by Sweden's
Swedish Match AB, markets a Dominican cigar
whose label sports a red dot in the O. Cuba's
Cohibas have a gold, black and white band.
Staff Writer Ian Katz contributed to this
report from Havana.
Information from Bloomberg News was used
in this report.
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