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A trademark battle over the rights to the legendary “Cohiba” cigar name will not be tried before a jury, a Southern District of New York federal judge has ruled. Judge Robert W. Sweet found that the claims by Cuban government-run Cubatabaco against General Cigar Co. Inc. over the “Cohiba” mark are based in equity, not in law, and he rejected General Cigar’s bid to have an American jury decide the matter. The dispute over what is widely considered to be Cuba’s finest cigar in Empressa Cubana Del Tabaco v. General Cigar Co., Inc. 97 Civ. 8399, stems from the unique, and sometimes indirect, competition between the two companies because of the Cuban trade embargo. “The dispute may foreshadow an effort by Cubatabaco to return Cuban Cohiba to the market in the United States,” Judge Sweet said. “Since Cubatabaco is an instrumentality of the government of Cuba, the right to a jury trial is both procedurally challenging and tactically significant.” The complaint filed by Cubatabaco in 1997 charged that General Cigar was exploiting the “Cohiba” mark. It made claims under the Lanham Act, 15 U.S.C. �1125, for willful trademark and trade dress infringement, similar claims under state law, as well as a claim of unfair competition under the Paris Convention for the Protection of Intellectual Property. Cubatabaco asked for an order canceling two General Cigar trademark registration numbers for “Cohiba” in the United States, and an order directing General Cigar to disgorge its profits on a theory of unjust enrichment. Cubatabaco has owned the Cuban trademark for the Cohiba brand since 1972, and has since registered the mark in 115 countries worldwide. A U.S. trade embargo prevented the brand from being sold here. General Cigar obtained its first of two U.S. trademark registrations for the Cohiba mark in 1981. NO DAMAGES Judge Sweet said General Cigar’s motion for a jury trial “requires once again peering through the mists of time, aided by precedent, to define the line between equity and law.” He first ruled that General Cigar can not obtain a jury trial on Cubatabaco’s claim for disgorgement of profits. Because the company has never been able to sell its cigars in the United States, he said it “does not and could not argue that it is entitled to damages as a result of General Cigar’s allegedly wrongful conduct,” he said. And Judge Sweet said that the two companies do not directly compete and have no contractual relationship. Had their been a breach of contract claim, he said, General Cigar would have been entitled to a jury trial. By contrast, he said, both Cubatabaco’s bid for an accounting for unjust enrichment profits and the cancellation of General Cigar’s trademark registrations are requests for equitable remedies. Moreover, Judge Sweet said, “to the extent that Cubatabaco is limited to injunctive relief on its federal dilution claim, the claim is equitable in nature and does not give rise to a jury trial right.” And the same is true, he said, for Cubatabaco’s New York State anti-dilution claim and the company’s claim for attorney’s fees and costs. Michael Krinsky, David B. Goldstein and Christine S. Kim, of Ribinowitz, Boudin, Standard, Krinsky & Lieberman, represented Cubatabaco. Harry C. Marcus and Janet Dore represented General Cigar Co Inc.

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