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A federal judge wrote into law this week what cigar aficionados have known for years: Cohibas are from Cuba. In a 137-page opinion, Southern District Judge Robert W. Sweet ruled that General Cigar Holdings Inc., based in the United States, can no longer sell cigars under the famous Cohiba brand name. The trademark, the judge said, belongs to Cubatabaco, the Cuban government tobacco company that produces the cigar prized by Fidel Castro. Judge Sweet found “strong evidence” that General Cigar had used the name to trade off the Cuban Cohiba’s cachet among cigar smokers. The product probably created confusion in the marketplace, the judge found. The ruling in Cubatabaco v. General Cigar Co. Inc., 97 Civ. 8399, enjoins General Cigar from using the name in future sales. Low-priced versions of the American Cohiba, which are manufactured in the Dominican Republic, sell for about $120 a box. Judge Sweet said the trademark lawsuit, which was brought by Cubatabaco, would have been more clear cut if Cuban cigars were available in the United States, rather than prohibited by economic sanctions imposed on the island nation. “The unavailability of the Cuban Cohiba makes the issue of confusion a closer call,” Judge Sweet wrote. Still, he said, the strength of the Cohiba trademark allowed it to prevail under the “well-known marks doctrine.” “In order for confusion between the two brands to be relevant in the present litigation, there must be a significant risk that the consumer will make a purchasing decision based not on the goodwill or reputed quality of the General Cigar Cohiba but on the mistaken association with the Cuban Cohiba, a brand with a reputation as being one of the best cigars in the world,” the judge wrote. Cubatabaco began selling its cigars in 1969. Sales outside of Cuba date to 1982, and its cigars are now widely sold in Europe and elsewhere. General Cigar registered the Cohiba mark in the United States in 1981 and was not challenged by Cubatabaco then. For a time, General Cigar stopped selling cigars under the name. In 1992, however, the magazine Cigar Aficionado was born as cigar smoking increased in popularity. The magazine’s first issue featured a long article on Cohiba cigars. General Cigar has admitted that the issue at least in part spurred a reintroduction of a line of Cohiba cigars. Cubatabaco sued over the cigars in 1997, but the suit was later set aside for settlement talks. Litigation began apace again in 2000, leading to a bench trial last year and this week’s ruling. Judge Sweet found that Cubatabaco presented evidence that it possessed a protectable mark in 1992 under the well-known marks doctrine and was entitled relief under �43(a) of the Lanham Act. He canceled General Cigar’s trademark registration and ordered the company to deliver all packaging, labels and other mark-bearing products to Cubatabaco for destruction. Judge Sweet did not decide damages. The Cuban company is seeking damages equivalent to General Cigar’s profits on its Cohiba cigars since 1992, said Michael Krinsky of Rabinowitz, Boudin, Standard, Krinsky & Lieberman, which represents Cubatabaco. He said he could not estimate that figure. Cubatabaco is also represented by Winston & Strawn. John J. Kirby of Latham & Watkins, which represents General Cigar, could not be reached for comment. General Cigar is also represented by Morgan & Finnegan.

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