General Cigar “restored” as rightful owner of COHIBA cigar mark

[El Presidente]

I need a lawyer to break it down.

_________________________________________________________

USA

August 27 2010

http://www.lexology.com/library/detail.asp...61-51d43811676f

McDermott Will & Emery

Shilpa V. Patel

The U.S. Court of Appeals for the Second Circuit reversed a lower court holding that plaintiff-appellee, Empresa Cubana Del Tabaco (Cubatabaco) was not entitled to relief from a 2004 judgment dismissing Cubatabaco’s claim of unfair competition under New York law in connection with defendant-appellant General Cigar’s use of the famous COHIBA cigar mark. The Second Circuit also reversed a previous judgment entered in favor of Cubatabaco that had permanently enjoined General Cigar’s use of the mark. Empresa Cubana Del Tabaco v. General Cigar Co. Inc., Case No. 08-5878 (2d Cir., July 14, 2010) (non-precedential)

Cubatabaco is a Cuban state corporation that has claimed, during almost 13 years of litigation, that it should own the U.S. rights to the COHIBA mark. In 2006, it seemed that General Cigar owned the use of the mark COHIBA in the United States after the U.S. Supreme Court refused to hear Cubatabaco’s appeal. Subsequently, a New York Court of Appeals decision ruled that while New York’s common law of unfair competition did not recognize the famous marks doctrine, a foreign plaintiff may prevail on a claim of unfair competition based on misappropriation, by showing that a defendant deliberately copied the plaintiff’s mark for use in New York and that consumers of the defendant’s product primarily associate the mark with the plaintiff’s product. In the New York state case, the court did not mention a separate and distinct requirement of bad faith. After the case was reopened in the Southern District of New York, Cubatabaco relied upon the intervening state court decision in framing its Rule 60 motion for relief from a judgment dismissing Cubatabaco’s unfair competition claims. Based upon the New York state case, district court again enjoined General Cigar from using the Mark. General Cigar appealed.

On appeal to the Second Circuit explained that Rule 60 provides for a catch-all provision that is a grand reservoir of equitable power to do justice in a particular case and is properly invoked when extraordinary circumstances justify relief or when the judgment may work an extreme and undue hardship. However, the court cautioned that Rule 60 motions are disfavored.

Here the Second Circuit explained that Rule 60 motion did not warrant reopening the 2004 judgment as a consequence of the New York state court decision because, as a general matter, a mere change in decisional law does not constitute an extraordinary circumstance for the purposes of the federal rule. The Second Circuit also found that the state court decision did not represent an intervening change in New York’s law of unfair competition, nor did it clarify elements of an unfair competition claim or correct misinterpretations of New York law by federal or lower state courts.

[TMS36]

Courts in the states tend to not rule in favor of the "enemy".

[cigcars]

Yeah, well as they say in Australia - No worries, Mate! You don't have to worry about ME smokin' that Red Dot crap!

[LeafLover]

Love my red dot cohibas in the glass top box.

[Puros Y Vino]

If the embargo lifts perhaps Cuba should put their own in place to not ship ANY cigars to the US. At the very least Cohiba's. If they don't have the trademark in place it doesn't do them any good to put them on the market in the US. General Cigar knew what they were doing when they used the famous Cuban brand names for their dog rockets. Pretty greasy move if you ask me. Cigar lovers will know what the real deal is.

[puros71]

Thats a joke!

[cigcars]

If the embargo lifts perhaps Cuba should put their own in place to not ship ANY cigars to the US. At the very least Cohiba's. If they don't have the trademark in place it doesn't do them any good to put them on the market in the US. General Cigar knew what they were doing when they used the famous Cuban brand names for their dog rockets. Pretty greasy move if you ask me. Cigar lovers will know what the real deal is.

Good one! And yes, perfect description of those red dots...

[jsd]

I don't know a single person who smokes those red dots.

[Leopolis Semper Fidelis]

I don't know a single person who smokes those red dots.

Neither do I. Perhaps people who do so would be too embarrassed to admit it, unless they say "it's only for research purposes".

[Colt45]

It's funny - many of the brands in the Habanos portfolio were stolen from their rightful owners, and they're crying foul over someone

doing the same to them. That's entertainment!

[Leopolis Semper Fidelis]

It's funny - many of the brands in the Habanos portfolio were stolen from their rightful owners, and they're crying foul over someone

doing the same to them. That's entertainment!

That is so true - oh, the irony!

[Charltonc]

Karma is a *****. If you steal from innocent bystanders you are going to get screwed eventually.

[gammon]

.

looks like Cuba will loose alot, when Cuba becomes an open market. Microsoft Corp will try and get all those Pirated software to pay their dues and Other Corps will request the Cuban government to get those pirated stuff off the market.

[El Presidente]

.

looks like Cuba will loose alot, when Cuba becomes an open market. Microsoft Corp will try and get all those Pirated software to pay their dues and Other Corps will request the Cuban government to get those pirated stuff off the market.

Yeeeeesssss......good luck with that one

What pirated software?

How did that get there?

We will crack down immediately?

We are being bullied?

it's a Virus!

[PADDYWHACK121272]

I appreciate that some Cuban brands / families could have a genuine grievance regarding how things have panned out following the revolution but surely in this particular case it is a joke and there must be some element of vexatious behaviour on behalf of the U.S courts? Am I right in thinking that cohiba was 'invented' in the late 60's?

[PigFish]

It's funny - many of the brands in the Habanos portfolio were stolen from their rightful owners, and they're crying foul over someone

doing the same to them. That's entertainment!

... badges!

... we don't need no stinkin' badges!!!

Kinda' like a UN investigation of human rights violations! -LOL

[mmacleod]

... badges!

... we don't need no stinkin' badges!!!

Kinda' like a UN investigation of human rights violations! -LOL

Now that is seriously FUNNY

[CanuckSARTech]

I appreciate that some Cuban brands / families could have a genuine grievance regarding how things have panned out following the revolution but surely in this particular case it is a joke and there must be some element of vexatious behaviour on behalf of the U.S courts? Am I right in thinking that cohiba was 'invented' in the late 60's?

Correct. "Cohiba" was a post-revolution, Cubatabaco (?) creation.

And yes, I agree with others that there is a bit of come-upance in H S.A. losing this battle, and how they're fighting for rights on one brand that they themselves ripped from dozens of other tobacco families during the revolution / post-revolution. It is definite pot-kettle-black.

But, that said, every case is supposed to be defined on it's own merits. The chronological background and inherent ownership / trademark rights definitely rest in H S.A.'s hands - the courts should have decided otherwise than they did, right or wrong with the embargo. No doubt, this will go higher, and likely be reversed (again).

[compitaveggie]

This is karma kicking the Cuban government in the butt.

The REAL VICTIM is the person that buys these Non-Cuban Cohiba cigars because they THINK they are real Cubans or that they are somewhat similar. There is no doubt in my mind that General Cigar is 100% taking advantage of the uneducated cigar smoker with these dog rocket cigars, for that General Cigar should be ashamed.

Jose

[Puros Y Vino]

The REAL VICTIM is the person that buys these Non-Cuban Cohiba cigars because they THINK they are real Cubans or that they are somewhat similar. There is no doubt in my mind that General Cigar is 100% taking advantage of the uneducated cigar smoker with these dog rocket cigars, for that General Cigar should be ashamed.

Jose

Exactly! They are trying to profit off of the "goodwill" and reputation of the Cuban brands. Revolution or not, those brands originated in Cuba and surely would have had their trademarks registered and honoured worldwide.

[SnakeHips]

But, that said, every case is supposed to be defined on it's own merits. The chronological background and inherent ownership / trademark rights definitely rest in H S.A.'s hands - the courts should have decided otherwise than they did, right or wrong with the embargo. No doubt, this will go higher, and likely be reversed (again).

If I remember correctly, the technicality that keeps favoring General is that they got the trademark first, in the early '80s. Cuba invented Cohiba, after the Revolution, but General still beat them to the trademark before Cuba's Cohiba became a public brand by a couple of years. That's been the point of contention, and from a technical point of view, I can see how General has won these cases. Alexander Graham Bell is known today because he bribed a Patent Office worker to date his phone patent a day before the patent of the guy who he ripped off; it's all about technicalities. It ain't cool or right, but that's how it is.

[Puros Y Vino]

Even with this major point of contention. Cigar smokers are going to seek real Cuban cigars, not their redheaded step brothers. Its of of no surprise that the USA is one of the largest growing markets for HSA, even with an embargo. That tells you that the cigar smoking public knows what they want and will go to any lengths to get it. You can't dress up a **** with a fancy label.