In a friendly conversation crowned by a cup of coffee and a good Cohiba cigar, Adargelio Garrido de la Grana (Cardenas, Matanzas 1958) paused for a moment to talk to us. This is what this man, who acts as Legal Advisor and Manager, Secretary-General of the Board of Stockholders and the Management Council at Habanos S.A., and who’s also an attorney at Cubatabaco for right litigations and author of a well-illustrated and lovely book about the history of the Cohiba, had to say: “The making of Cohiba cigars kicked off back in 1966.

But what happened previous to that date? In the early 1960, Bienvenido Perez Salazar (Chicho), who was one of Fidel Castro’s bodyguards, received from a friend of his –Eduardo Rivera Irizarri- an unnamed cigar he used to roll for himself. Chicho started smoking those cigars and gave away one to Fidel in one occasion. I’m talking about the lancero. It was quite a chic stuff at the time since it was long and thin, when thick stogies were commonplace. Fidel began to smoke it and liked it. That cigar jumped out of the boundaries of the Cuban government as top officials started giving them away to dignitaries and statesmen from elsewhere.”

“In 1966,” Mr. Garrido goes on, “Celia Sanchez, the mastermind of the Cohiba’s early marketing strategy, realized that cigar needed a name. Given her supreme liking for the Cuban identity and autochthonous things, she started scouring into our history and pinpointed a name –that was indeed the first moniker this cigar ever had. And Celia, always faithful to our Cuban roots, said ‘we’ll call it Cohiba.’ And that’s how that brand got its nickname.”

“Alter that, a toilsome process to build the new brand began, a process that included new designs and formats in a bid to make Cohiba an internationally recognized trademark of Cuban cigars. A solo band was not good enough –Celia thought- so she came up with the idea of making specials and panatelas. The very first registration was requested in 1969, following the conclusion of the first design.. The true fame of the Cohibas came to pass in the early 1970s as diplomats-only stores started to pop up all across the island nation. In 1982, Cubatabaco made the decision to launch the brand to the world market.”

In order to wrap up this fast-paced grand tour around Cohiba’s 40 years of existence, Mr. Garrido says: “From 1982 to date, everything this brand has built on along the way is history. A decision to streamline the brand’s image was made, and so a third design –the one currently in use- came out of the drawing board and a new institutional image was born. In 1989, the arido band was enhanced to three new bands: robusto, exquisitos and esplendidos. In 1992, the 1492 line hit the shelves. What I’m trying to say is that through all these years, from 1966 to date, the Cohiba brand has grown to become the world’s best-known cigar. Make no mistakes about it!”

THE LAWSUIT

General Cigar, a major U.S. tobacco company, registered the Cohiba trademark in America back in 1978. In the mid 1980s and following two years of meager sales, General Cigar abandoned the brand for nearly five years. In late 1992,

General Cigar resumed the use of the trademark as it sold small quantities. That happened on the heels of an article published in Cigar Aficionado magazine that praised the Cohiba a “Cuba’s legendary trademarked brand, probably the world’s best cigar.” Recognized as the driver of America’s big cigar boom in the 1990s, the Cigar Aficionado magazine reported in its first issue that the Cohiba “has a special place in the heart of Cuba.” General Cigar requested a new registration for the brand in late 1992. When Cubatabaco heard of the new trademark registration request and the resumption of General Cigar’s sales, the Cuban enterprise rushed to press charges against General Cigar.

In January 1997, Cubatabaco asked the U.S. Office of Trademarks and Patents to cancel General Cigar’s trademark register and stamp out the trademark name on behalf of Cubatabaco as well. In September 1997, General Cigar re-launched the brand in New York City and Miami, allegedly in response to the legal steps taken by Cubatabaco in January of that same year. Alawsuit was filed in the New York City South District Courthouse.

The first-instance ruling issued by the Federal District Courthouse in march 2004 stated that Cubatabaco, and not General Cigar, had the right to market cigars in the U.S. under the Cohiba brand name. This court ruling recognized Cuba’s Cohiba as a “remarkable” brand entitled to special international protection. Therefore, the court also ordered the cancellation of General Cigar’s registered trademark and banned this company from selling cigars under that particular brand name.

General Cigar appealed the ruling of the Federal District Court to the Second Circuit Court of Appeals of New York, claiming –among other arguments- that the ruling issued by the Federal District Court violates the U.S.

Embargo Act against Cuba. During the appealing process, the U.S. government –acting as amicus curiae- upheld the ruling of the Federal District Court in favor of Cubatabaco. However, based on the February 2005 ruling , the Second Circuit Court of Appeals of New York reversed the ruling of the Federal District Court, unheeding the opinion of the U.S. government. The Court of Appeals stated that the U.S. embargo law stripped Cubatabaco of its rights over the Cohiba trademark.

Cubatabaco appealed the decision –to no avail- before the full panel of the Court of Appeals. Later on, the appeal went all the way up to the Supreme Court, where the lawsuit is currently filed pending a final ruling. The Supreme Court has asked the U.S. Justice Department to present a report containing the opinion of the American government.

Finally, the ruling of the Court of Appeals ignores the implementation of the Paris Convention on Industrial Property Rights, an international agreement signed by both Cuba and the U.S. Article 6bis of the Paris Convention guarantees citizens of the signatory member states full protection of their brands under the remarkable trademark doctrine. In addition, the same ruling also ignores the reciprocity status Cuba has granted to remarkable trademarks patented by American companies that are registered in Cuba and that, in spite of their use, have been recognized as such by Cuban courts.