Scandinavian Tobacco Group’s General Cigar Company has filed a lawsuit in the U.S. District Court for the Eastern District of Virginia against Empresa Cubana del Tabaco d.b.a. Cubatabaco.
The lawsuit appeals the December 20, 2022 decision of the Trademark Trial and Appeal Board (TTAB) regarding the cancelation of the COHIBA trademark registrations in the US. In addition to appealing the TTAB decision, General Cigar also filed additional claims seeking a declaration that Cubatabaco has no grounds at all to cancel General Cigar’s COHIBA trademarks in the US.
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.”
While the lawsuit moves forward, General Cigar will continue to manufacture, market, sell and enforce its COHIBA marks, and General Cigar’s COHIBA registrations remain active.
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.”
In February 2005, the Second Circuit Court of Appeals in New York ruled unanimously in favor of General Cigar Co., Inc. in the lawsuit filed by Cubatabaco in 1997 over the trademark ownership of the COHIBA brand in the United States. 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.”