MIAMI, (Reuters) – Miami cigar maker Jose Montagne has been fighting for more than a decade to protect his catchy Cuban brand name, Guantanamera, from Cuban government trademark lawyers.
But a recent warming in U.S.-Cuban relations could be the death knell of American cigar makers like Montagne who are seeing their legal position erode as they brace for the potential invasion of Cuban cigars into the world’s most lucrative cigar market.
A Cuban exile who came to the United States in 1996, Montagne is one of more than a dozen cigar makers in the United States that Cuba’s state-owned tobacco company has tried to block from using names referring to the Communist-run island.
Montagne, who began making his cigars in Central America in 1997, maintains that Cuba’s government can’t monopolize all things Cuban, noting that Guantanamera is a popular song both for those living on the island and worldwide.
“This isn’t about money, it’s about who we’re fighting,” said the 50-year-old exile who sports a pale pink polo shirt and a white Panama Jack hat.
Cuban cigars have been sought after around the world since the island’s natives presented dried tobacco leaves to Christopher Columbus more than five centuries ago. In the United States, they have taken on a coveted, forbidden-fruit status since a U.S. trade embargo outlawed their import a half century ago.
The consumer magazine Cigar Aficionado has estimated that the U.S. premium cigar market alone is worth as much as $2.6 billion, with Cuba hoping to snap up to 25-30 percent of that if and when the trade embargo is eventually lifted.
To that end, Cuba has strenuously sought to block Cuba-inspired trademarks from being registered in the United States.
THE TWO COHIBAS
Cuba’s legal push hotted up when Spanish tobacco giant Altadis, now a subsidiary of Britain’s giant Imperial Tobacco, purchased a 50 percent stake in Cuba’s state-owned cigar company Habanos S.A. in 2000, according to Montagne’s attorney, Frank Herrera.
In 2012 it successfully blocked Kansas City-based Xikar Inc from registering the name Havana Collection for a line of $300 cigar cutters made in France and decorated with pieces of Cuban cigar bands and box art.
“Habanos claimed we were causing confusion about the origin of the product,” Xikar Chief Executive Kurt Van Keppel told Reuters. “Nobody was confused whether this was made in Cuba. We advertised them as made in Paris.”
Xikar isn’t the only case. The Cohiba, Cuba’s most famous brand created by Fidel Castro in 1962, has been at the heart of a 16-year-long battle between the Cuban government and rival Swedish Match that holds the trademark for a Dominican-made Cohiba sold in the United States.
In February the U.S. Supreme Court ruled in favor of Cuba’s cigar monopoly when it declined to hear an appeal of a lower court decision favoring the island’s exclusive claim to the Cohiba brand.
The move sent the matter back to the U.S. Patent and Trademark Office that could finally decide who receives the trademark.
Imperial spokesman Alex Parsons said in an email that Cuban state-owned Habanos “will take appropriate action to protect its intellectual property.”
LEGAL STRATEGY
Cuba’s New York attorneys say the legal strategy is designed for the day when Cuba can sell its cigars in America.
“Thousands of U.S. companies have registered … intellectual property in Cuba in anticipation of the day when they will be able to sell their products there. Cuban companies are doing exactly the same thing,” said Michael Krinsky, a partner with Rabinowitz, Boudin, Standard, Krinsky & Lieberman.
Cuba has already begun to penetrate the U.S. market using its European partner to churn out Cuban brand cigars made with non-Cuban tobacco, legally using the same names as its top domestic brands such as Montecristo and Romeo y Julieta.
As a result, when the trade embargo ends, U.S. consumers could find themselves being offered multiple products: a pricier original Romeo y Julieta from Cuba alongside a more affordable non-Cuban variety.
Montagne filed a U.S. trademark for his Guantanamera brand in 2001. Habanos quickly launched its own brand of the same name a year later in Germany, according to legal documents.
The name Guantanamera is as Cuban as it gets, referring to the island’s best-known patriotic song, inspired by the poetry of its independence hero, Jose Marti.
The tune was popularized in the 1960s by American folk singer Pete Seeger and has since become known worldwide.
But judging by recent legal history, that may not suffice to beat Cuba in court.
