In the eyes of the law

In Empresa Cubana del Tabaco (Cubatabaco) v. Culbro Corp. and General Cigar Co.,  97 Civ. 8399 (S.D.N.Y. 2009) the Federal Court in the Southern District of New York has reversed a number of previous rulings in this case and granted Cubatabaco an injuction which would effectively stop General Cigar from using the name “COHIBA” on its cigars.  This is a very interesting case from an intellectual property standpoint because, as we all know, there has been an embargo on Cuban Cigars for over 4 decades.  Trademark misappropriation occurs under New York law when a company intentionally uses someone else’s mark which is commonly associated with a foreign company.  Although there appears to be conflicting law on whether “bad faith” is required, the Court indicated that under the present facts, the use of the “famous” cigar name by a U.S. company could damage the goodwill in the authentic Cuban brand’s name.  The Court did, however, order that enforcement of the injunction be delayed until General Cigar has a chance to appeal this part of the judgment.  What makes this decision noteworthy is that the U.S. Court has seemingly indicated that a foreign company has common law intellectual property rights in the U.S. even if it is not selling goods here.