As expected, Scandinavian Tobacco Group (STG)’s General Cigar Company has filed a lawsuit against Empress Cubana del Tabaco (Cubatabaco). The lawsuit is a response to the December 20, 2022 decision of by the U.S. Trademark Trial and Appeal Board (TTAB) which cancelled General Cigar Company’s Cohiba Trademark at Cubatabaco’s request.
In a press release Régis Broersma, president of STG’s North America and Rest of World division said, “By initiating this lawsuit to appeal the TTAB decision and to obtain a declaration of its rights, General Cigar expects the court will ultimately rule it has exclusive US rights to the COHIBA marks.”
Owen McKeon US general counsel for STG noted, “General Cigar has appealed the Board’s decision as it is improperly based on the re-litigation of a claim that was decided in General Cigar’s favor by the US Court of Appeals for the Second Circuit more than a decade ago. As such, General Cigar maintains that the Board’s ruling is contrary to clear U.S. Supreme Court precedent.”
The grounds for the cancellation given by TTAB were based on Articles 7 and 8 of the Inter-American Convention for Trade Mark and Commercial Protection (aka The Pan-American Convention). Both the United States and Cuba were a part of the agreement.
While the lawsuit moves forward, General Cigar has stated it will continue to manufacture, market, sell and enforce its Cohiba marks, and General Cigar’s Cohiba registrations remain active.
The battle for the ownership of the Cohiba brand trademark has been going on for 25 years. This traces back to 1997 when a lawsuit was filed by Cubatabaco over trademark ownership of the Cohiba brand in the United States. In February 2005, the Second Circuit Court of Appeals in New York ruled unanimously in favor of General Cigar Co. In the ruling, the Second Circuit held that “General Cigar’s legal right to the COHIBA mark has been established against Cubatabaco. General Cigar has a right to use the mark in the United States because it owns the mark in the United States.”