Cuba Wins Latest Battle Over Cohiba Name

Stogie News:
Cuba Wins Latest Battle Over Cohiba Name
Wednesday, December 10th, 2008

As we reported Friday, a legal ruling in the decade-long battle over the
Cohiba brand name could be a major setback for the General Cigar Co.
General, a subsidiary of Swedish Match AB and one of the largest premium
cigar makers in the world, makes and distributes such famous brands in
the U.S. as Macanudo, Partagas, Punch, Hoyo de Monterrey, Bolivar, La
Gloria Cubana, and many others.

But the General brand at the heart of the controversy is Cohiba, perhaps
the most famous trademark in cigars. Last month Cubatabacco, the storied
Cuban tobacco monopoly (also known as Habanos SA), won a major victory
in the latest decision in the protracted legal fight with General over
the Cohba name. The key decision changed the standard that determines
who has the rights to the Cohiba trademark—rendering a 2004 ruling
against General Cigar Co. upheld.

The decision rests on a legal standard known as the "famous marks
doctrine," which states that a trademark is protected in a given nation
if it is well-known, even though the mark is neither used nor registered
there. The court found that despite the fact Cubatobacco didn't file for
a trademark on the Cohiba name, under the famous names doctrine it still
retains the name's rights.

The case is complicated by the fact that the Cuban trade embargo means
that Cubatobacco can't sell Cohibas in the U.S. Notwithstanding that
well-known fact, the judge held that consumers were likely to be
confused between Dominican-made and Cuban Cohiba cigars.

Judge Notes Cubatobacco's 'Cozy' Relationship with Cigar Aficionado

The 2004 decision also provides a unique look into the premium cigar
business. The first 70 pages of the decision read like a history of the
Cohiba name and of cigar marketing practices, including fascinating
details of the role played by Cigar Aficionado in establishing the Cuban
Cohiba's mystique.

At one point, in a discussion over how well-known the Cuban Cohiba was
in the early nineties, the judge observes a "cozy relationship
between…Cubatabaco's marketing department and the editorial staff of
Cigar Aficionado" that resulted in multiple "puff pieces," or positive
publicity for Cohiba.

The Future of General Cigar's Cohiba Line is Uncertain

If the current ruling stands, the decision will mark the end of General
Cigar's "Red Dot" Cohiba lines. As part of the 2004 ruling, the judge
ruled that General must turn over all its cigars and other materials
that contain the Cohiba name. However, that order seems to be pending
any appeal by General Cigar.

In a statement provided to StogieGuys.com, General Cigar's Dan Carr, the
senior vice president of sales and marketing, said "we strongly disagree
with the Judge's ruling and will continue to vigorously defend our
position, up to and including (if necessary) taking an appeal of his
ruling."

We asked General Cigar what the ruling means for the immediate future of
the Dominican Cohiba line, and if the company would continue to market
and produce the cigar. We are told, however, that aside from the above
statement, "given that this is pending litigation, we cannot comment
further."

http://www.stogieguys.com/2008/12/12102008-stogie-news-cuba-wins-latest-battle-over-cohiba-name.html