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A federal court in the United States ruled last Thursday in favor of the Cuban Tobacco Company (Cubatabaco) in its long-standing legal battle against the American company General Cigar, regarding the rights to use the Cohiba brand in that country.
The decision was issued by Judge Leonie M. Brinkema of the U.S. District Court for the Eastern District of Virginia, and it confirms the cancellation of the trademark registrations for Cohiba owned by General Cigar, in line with a previous ruling by the United States Trademark Trial and Appeal Board (TTAB), as reported by the official site of Habanos S.A.
The court also dismissed with prejudice General Cigar's attempt to overturn that decision, thereby paving the way for Cubatabaco to register Cohiba in the United States, although the ongoing embargo prevents Cuban cigars from being legally marketed in that country.
According to the ruling, General Cigar was aware that the Cohiba brand was already being used in Cuba when it applied for registration in the U.S. in 1978.
Internal documents uncovered by Cubatabaco reveal that the American company referred to the brand as a "brand in Cuba" and as "Castro's cigar."
The court applied the Pan American Convention in its ruling, a treaty signed by both Cuba and the United States, which establishes the obligation to cancel the registration of a trademark if it was already in use in another member country at the time of the application.
In this case, it was determined that General Cigar acted with prior knowledge of the existence of the Cohiba brand in Cuba.
From Cubatabaco, the official Lisset Fernández García expressed satisfaction with the ruling, emphasizing that, although the embargo prohibits the sale of Cuban cigars on U.S. soil, the legal recognition of the brand's ownership represents a victory for the regime.
"This confirms our position that, from the beginning, the rights to Cohiba rightfully belong to the Cuban company," he stated.
The legal dispute between Cubatabaco and General Cigar dates back to 1997, when proceedings began before the Trademark Board.
Since then, the process has gone through more than two decades of legal battles in federal and administrative instances in the United States, amid a politically adverse context for the economic interests of the Cuban regime.
The legal team of Cubatabaco was led by attorney Michael Krinsky from the firm Rabinowitz Boudin Standard Krinsky & Lieberman, with support from Natasha Reed (Foley Hoag LLP) and Benjamin Hatch (McGuireWoods LLP).
Although the Cohiba brand has been a symbol of Cuban tobacco worldwide and of the regime for decades, its use and marketing in the United States have been contested, even as American consumers have accessed “Cohiba” cigars made outside the island, leading to confusion and unfair competition in the eyes of the Cuban government.
With this ruling, Cuba scores a legal victory, although without immediate commercial impact, given the restrictions of the ongoing embargo.
General Cigar will appeal the ruling, and the litigation over Cohiba remains ongoing
The favorable verdict for Cubatabaco is the result of a lawsuit filed in February 2023 by the American company General Cigar Company, in an effort to overturn a previous ruling by the TTAB that in 2022 had ordered the cancellation of its registrations for the commercial name Cohiba in the United States.
The new ruling, issued by federal judge Leonie M. Brinkema, reaffirms the previous decision of the TTAB and is based on the Inter-American Convention of 1929, which protects registered trademarks in other member countries, according to a cable from AFP.
However, the agency emphasized that General Cigar plans to appeal the ruling again to the TTAB itself, indicating that the legal conflict is not completely resolved yet.
Despite the restrictions of the U.S. embargo, Cuban cigar exports reached a record high of $827 million in 2024, marking a growth of 16%, primarily driven by the Asian market, according to official figures.
The Cohiba brand, created in 1966, derives its name from the term used by the Taíno indigenous people to refer to the tobacco leaves they smoked, which surprised Europeans upon their arrival in America.
It was also the personal brand of the Cuban leader Fidel Castro, who smoked Cohibas for years until he gave up the habit in 1985.
Frequently Asked Questions about the Cohiba Trademark Litigation in the United States
What decision did the federal court make regarding the Cohiba brand?
The federal court of the United States ruled in favor of the Cuban Tobacco Company (Cubatabaco), confirming the cancellation of the trademark registrations of Cohiba owned by General Cigar. This paves the way for Cubatabaco to register the Cohiba brand in the United States, although the existing embargo prevents Cuban cigars from being legally sold there.
What does the Pan American Convention imply in this case?
The Pan American Convention is a treaty signed by Cuba and the United States that establishes the obligation to cancel the registration of a trademark if it was already in use in another member country at the time of application. In the case of Cohiba, it was determined that General Cigar registered the trademark in the U.S. knowing that it was already in use in Cuba, which led to the cancellation of their trademark registrations.
What is the commercial impact of this ruling for Cuba?
Despite being a legal victory for Cuba, the ruling has no immediate commercial impact due to the restrictions of the U.S. embargo. This means that while Cubatabaco can register the Cohiba trademark in the U.S., it cannot legally market its products in the U.S. market due to the embargo.
What will happen to the lawsuit regarding the Cohiba brand after this ruling?
Despite the favorable ruling for Cubatabaco, General Cigar has announced its intention to appeal the decision, indicating that the litigation over the Cohiba brand is not yet completely resolved and will continue in the courts.
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