The Cohiba® cigar brand is known worldwide as a symbol of quality and exclusivity. Despite its near universal notoriety, the trademark is actually the property of two companies that have been locked in a legal battle in the US for more than 17 years.
Cohibas® that are legally purchased in the US are Dominican Republic-produced cigars made by General Cigar. Culbro Corp., which has since been merged into General Cigar, obtained a US registration for the mark “Cohiba” in 1981. General Cigar obtained a second US registration in 1995.
Cubatabaco (Empresa Cubana del Tabaco), owned by the Cuban government, began producing cigars under the name “Cohiba” pursuant to a trademark registered in Cuba in 1972. In the 1970s, Cubatabaco registered the trademark in more than 115 countries, except in the US.
Imperial Tobacco Group PLC, based in the UK, currently distributes all Cuban cigars sold world-wide through a joint venture with Cubatabaco.
US law, under the Cuban Assets Control Regulations (CACR), prohibits Cuban merchandise from being sold in the US – thus, in 2005, Cubatabaco’s legal efforts to claim the trademark failed because it would have resulted in a transfer of prohibited proprietary rights to the mark under the CACR.
In 2006, General Cigar’s legal victory appeared insurmountable when the US Supreme Court denied Cubatabaco’s petition for writ of certiorari.
In a surprising legal twist, the US Court of Appeals for the Federal Circuit ruled in favor of Cubatabaco by giving it standing to seek a cancellation of the registrations that blocked its own ability to register trademarks. This 2014 ruling means that the Second Circuit’s 2005 determination that Cubatabaco could not prevail in an infringement action – since the relief sought would result in a prohibited transfer of the mark – was “irrelevant to the proceeding before the Board,” according to the Federal Circuit.
In February of this year, the US Supreme Court handed another victory to Cubatabaco by refusing to intervene in the legal case against General Cigar. The decision allows Cubatabaco to once again request the cancellation of the trademark registered by General Cigar.
The case will now move to the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). If the US embargo against Cuba is lifted, and the legal provisions of the CACR are rescinded, Cubatabaco could gain control of the Cohiba® trademark in the US.