DLA Piper announced today that it successfully obtained reversal by the US Court of Appeals for the Second Circuit of a 2009 district court decision that had prohibited General Cigar Co., Inc. and General Cigar Holdings, Inc. from selling Cohiba cigars in the United States.  The July 14 ruling is a significant victory for General Cigar, as it restores General Cigar’s exclusive right to market and sell Cohiba brand cigars in the United States.  

“The Second Circuit’s reversal of the injunction that prohibited General Cigar from using the Cohiba mark reaffirms the company’s exclusive rights to the Cohiba cigar brand in the US,” said Andrew L. Deutsch, lead counsel and partner in DLA Piper’s Intellectual Property and Technology practice in the New York office.  “General Cigar’s Cohiba brand cigar is very popular among cigar enthusiasts, and General Cigar regards the outcome as a tremendous victory.  We are extremely proud of our team’s hard work to obtain a favorable decision on our client’s behalf.”

In 1997, the Cuban state tobacco monopoly, known as Cubatabaco, sued General Cigar, claiming that the company’s sale of the Cohiba brand cigar in the United States was federal trademark infringement and state law unfair competition.  In 2004, the US District Court for the Southern District of New York dismissed the state claim, but upheld Cubatabaco’s federal claims, and prohibited General Cigar from selling Cohiba cigars in the United States.  In 2005, the Second Circuit affirmed the District Court’s decision on state law, but reversed its finding of federal trademark infringement and vacated the injunction, allowing General Cigar’s continued sale of the Cohiba brand. The US Supreme Court refused to hear Cubatabaco’s appeal. 

However, in 2008, Cubatabaco moved to reopen the 2004 judgment on the grounds that New York unfair competition law had changed since the 2005 decision, and that it was now entitled to judgment on the unfair competition claim.  The District Court granted this motion, awarded Cubatabaco judgment on its state claim, and ordered another injunction that once again prohibited General Cigar’s sale of Cohiba cigars domestically.  The Second Circuit reversed, finding that the District Court had abused its discretion in ruling for Cubatabaco.  It held that New York law had not changed, and that there were no extraordinary circumstances to justify reopening the 2004 judgment. 

In addition to Deutsch, the DLA Piper team representing General Cigar included Joshua S. Sohn, a partner in the firm’s New York office and Airina L. Rodrigues, an associate also in the firm’s New York office.  

About the Intellectual Property and Technology Practice
DLA Piper’s Intellectual Property and Technology practice offers clients comprehensive IP services, including patent, trademark, copyright litigation, patent prosecution, IP due diligence and strategic IP asset management.  The firm has nearly 400 IP attorneys in 48 cities and 22 countries which ranks the group among the largest IP practices in the world.  DLA Piper’s Patent Litigation practice in the US alone includes more than 80 lawyers.