Among cigar aficionados, the Cohiba name has a legendary mystique. Although the brand originated in Cuba — it was the preferred cigar of Fidel Castro — Cohibas have been marketed in the U.S. by an American company called General Cigar for more than a decade. But how long it will continue to do so will depend on the 2nd Circuit. That’s because in a decision made public on Monday (Hat tip: Courthousenews), Manhattan Federal District Court Judge Robert Sweet enjoined General Cigar from using the Cohiba name. But Judge Sweet also stayed the injunction pending General Cigar’s appeal.
The decision was the latest development in a case that’s been raging for more than a decade. In 1997, Cubatabaco, a cigar maker owned by the Cuban government, sued General Cigar for trademark infringement and unfair trade by misappropriation under New York state law. Judge Sweet rejected the latter claim but ruled in Cubatabaco’s favor on the former. Even though General Cigar had registered the mark in the U.S. and Cubatabaco had not, Judge Sweet found that Cubatabaco’s had rights to the name under the “famous marks” doctrine, which holds that if a foreign trademark is well-known in the U.S. it is protected even though it’s not registered there. Cubatabaco is represented by Rabinowitz, Boudin, Standard, Krinsky & Lieberman.
In 2005, the 2nd Circuit upheld Judge Sweet’s dismissal of Cubatabaco’s unfair trade claims, but reversed his finding of trademark infringement. The court found that the U.S. embargo of Cuban goods prohibited Cubatabaco’s acquisition of trademark rights.
After the Supreme Court rejected Cubatabaco’s cert petition, the company’s lawyers went back to Judge Sweet asking him to reopen the case, arguing an intervening decision by the New York Court of Appeals made its unfair trade claims valid. Judge Sweet agreed, and a year ago, in December 2008, ruled that the company was entitled to relief, finding that General Cigar had exploited the good name of Cohiba for its own benefit. That decision paved the way for the injunction.
Michael Krinsky of Rabinowitz Boudin, an attorney for Cubatabaco, said Judge Sweet had enforced the “equitable principle that one company should not be able to profit from what it did not create.”
General Cigar is represented by Andrew Deutsch and Joshua Sohn of DLA Piper and Harry Marcus and Scott Greenberg of Locke Lord Bissell & Lidell. The company said in a statement that it would “vigorously appeal this matter” and that “until this matter is ultimately decided on appeal, we will continue to supply our retailers, and sell General Cigar’s Cohiba products to our valued customers in the United States of America.”
This article first appeared on The Am Law Daily blog on AmericanLawyer.com.