Havana wins the battle in Washington: Cohibas can only be Cuban

BarcelonaSince the overthrow of Fulgencio Batista as president of Cuba on New Year's Day in 1959, relations between the governments of Havana and Washington have been tense. Now, the Cuban government—indirectly—has just won a battle against a superpower, the United States, and what's more, thanks to a decision by a U.S. court.

The U.S. District Court for the Eastern District of Virginia has issued a ruling closing a long-running dispute between the Cuban company Cubatabaco and the U.S.-based General Cigar over the use of the Cohiba trademark. This court, in a final judgment, dismissed Cuba Cigar's final appeal, which asked the Trademark Law and Appeal Board (TTAB) to reverse its decision canceling General Cigar's Cohiba trademark registrations. The cancellation of General Cigar's use of the trademark, therefore, opens the door for Cubatabaco to register Cohiba in the United States.

This means that General Cigar cannot use this brand of cigars and, consequently, only Cubatabaco can. However, this does not mean that these cigars can now be purchased in the United States; quite the contrary, because the use of the brand is one thing and the product itself, which, being manufactured on the Caribbean island, is subject to the US embargo on Cuban products, is another.

The Virginia court determined in its ruling that General Cigar knew that Cubatabaco was already using the Cohiba trademark when it applied for its registration in the United States in March 1978. Among other evidence, the court pointed to internal memos from General Cigar's archives, discovered by Cubatabaco and Cubat, a cigar belonging to Fidel Castro.

According to the Pan-American Conference, of which both Cuba and the United States are members, countries were required to cancel a registration when the applicant—in this case, General Cigar—knew that the trademark was already in use in another treaty member country. The court applied the Pan-American Conference ruling in favor of Cubatabaco.

"We are pleased that both the judge and the United States Patent and Trademark Office have shown a willingness to recognize and enforce treaty rights in favor of Cubatabaco, a Cuban company, even though the U.S. embargo currently prevents the sale of Cuban cigars in the United States," said Cubatabaco and Habanos legal director. Fernández García reiterated that this "confirms" her position that, "from the beginning, the rights to Cohiba legitimately belong to the Cuban company."

Cubatabaco's fight for the rights to the Cohiba trademark in the United States has been a long one. Proceedings were initiated before the Patent and Trademark Office in 1997, and the litigation between General Cigar and the U.S. government have included lengthy proceedings in both federal courts and the U.S. Patent and Trademark Office. General Cigar had used the Cohiba trademark in the United States until the TTAB barred its use in 2022, a move now upheld by Judge Leonie M. Brinkema of the U.S. District Court for the Eastern District of Virginia.

Cuban Cigar Monopoly

The ruling finds it proven that General Cigar already knew that Cubatabaco was using the Cohiba trademark when it applied for its registration in the US in 1978 (which was subsequently granted in 1981). Cubatabaco applied for the Cohiba trademark in 1969 and obtained its registration in 1972. The trademarks are divided into two halves: one owned by Cubatabaco and the other by a consortium of shareholders under the umbrella of the Spanish-French group Altadis (owned by the British company Imperial Brands). Partagás, and Romeo y Julieta.