The Cuban dictator famed for his love of cigars is surely celebrating the U.S. District Court ruling in New York last week. A judge granted trademark protection to the famed Cohiba brand cigar that was made for him and is a high-status commercial icon of the island he rules.
In a March 29 opinion, Judge Robert Sweet Jr. stopped New York-based General Cigar from selling its own version of the Cohiba, which legend has it is rolled on the thighs of virgins. His decision cancelled that firm's trademark claim in the U.S. to the brand, which Judge Sweet found infringed on the "protectable mark" held by Cuban cigar company Cubatabaco, which developed Cohibas in the late 1960s. General Cigar intends to appeal.
The judge's opinion, one attorney said, will likely soon become an order, at which point General Cigar must turn over to Cubatabaco merchandise, packaging and other materials "which bear the infringing trademark."
Advertising and marketing were not the primary factors determining Judge Sweet's ruling, but both clearly factored into his decision. "In 1997," he writes, "advertising for the General Cigar Cohiba attempted to create an association in the consumer's mind to Cuba and the Cuban Cohiba." Cubatabaco's attorneys at Rabinowitz, Boudin, Standard, Krinsky & Lieberman, New York, argued that in its ads, created by New York agency McCaffery Ratner Gottlieb & Lane, General Cigar sought to foster confusion between the Cuban Cohibas, which are grown and rolled in Cuba, and General Cigar's Cohibas, which are made and grown from Cuban seeds in the Dominican Republic.
In his opinion, Judge Sweet wrote, "The advertising undertaken by others which misleadingly suggests an affiliation only adds to the possibility of confusion at the initial stage, even if the consumer later learns there is no affiliation between the two brands." Calls to the agency, to General Cigar's attorneys and to the company were not returned at press time.
Although the issue of the brand's health is not mentioned in the 137-page opinion, Judge Sweet's ruling "is the right thing," said Allen Adamson, managing director, Landor Group, a branding consultancy owned by WPP Group. "From a pure brand-theory point of view, no matter where you find a brand distributed, it should have the same qualities, heritage and experience. The promise should be consistent around the world."