FIDEL CASTRO SCORES MARKETING VICTORY

U.S. Judge Rules U.S. Firm Must Stop Using Cuban Cigar Brand Name

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NEW YORK (AdAge.com) -- Score one for Fidel Castro.

The dictator, famed for his love of hand-rolled cigars, is surely celebrating the U.S. District Court ruling that grants trademark protection

Photo: Hoag Levins
The Cohiba was declared one of the world's greatest cigars by 'Cigar Aficionado' in 1992.
to the Cohiba brand cigar that is a high-status commercial icon of the island he rules.

'Protectable mark'
In a March 29 opinion, Judge Robert Sweet Jr. stopped New York-based General Cigar from selling its own version of the Cohiba. His decision canceled 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.

General Cigar, in a statement, said it intends to appeal the ruling.

Developed in the late 1960s by Castro's personal cigar roller for Cubatabaco, the Cohiba went on to become the most internationally coveted of all "Havana" cigars and a subject of near-legend among the world cognoscenti.

'Cigar Aficionado' magazine
In 1992, the influential Cigar Aficionado magazine declared Cuban Cohibas to be among the world's greatest cigars. "To a cigar lover, smoking a Cohiba is a moment to savor," wrote author James Suckling. "It gives the same kind of satisfaction as a wonderful glass of Château Lafite-Rothschild does to a wine lover or a superb main course at a Michelin three-star restaurant does to a gourmet."

Judge Sweet'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 against General Cigar, 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."

Consumer confusion
Cubatabaco's lawyers at Rabinowitz, Boudin, Standard, Krinsky & Lieberman, New York, argued that in its advertising, created by New York agency McCaffery Ratner Gottlieb & Lane, General Cigar sought to foster consumer confusion between the Cuban Cohibas, which are grown and rolled in Cuba, and General Cigar's Cohibas, which are grown and made 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 lawyers and to the company were not returned at press time.

'Right thing'
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 of 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."

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