In a recent decision, the Federal Court found the COHIBA
trade-marks for cigars and cigarillos to be well-known and iconic
in Canada based primarily on expert evidence establishing use of
the brand in media, including film, television, music and print.
This led the Court to conclude that the fame of the brand extended
beyond cigar smokers and to reject an application to register the
trade-mark LAZARO COHIBA for use in association with rum, despite
the differences in wares and trades.
Tequila Cuervo ("Cuervo") applied to register LAZARO
COHIBA based on proposed use in Canada in association with
"alcoholic beverages, namely rum." This
application was opposed by Empresa Cubana Del Tabaco, trading also
as Corporation Habanos ("Habanos"). The main ground of
opposition was that the applied-for mark was confusing with
Habanos' trade-marks COHIBA and COHIBA & Design (depicted
below) registered for use in association with tobacco, including
The only evidence filed by Habanos before the Registrar of
Trade-marks ("Registrar") to establish use and reputation
of the COHIBA trade-marks in Canada was "steady and not
insubstantial" sales figures for 1994-1999. The Registrar
rejected Habanos' opposition concluding that the wares and
trades of the parties were different and while the COHIBA
trade-marks had been used in Canada for many years, they were only
known to some extent by a relatively small group of purchasers of
On appeal to the Federal Court (2013 FC 1010), Madam Justice Snider concluded
that the COHIBA trade-mark was well known "to the point of
being iconic—outside its sphere of users, and in the general
knowledge of the public." This finding was based on
additional expert evidence introduced by Habanos on appeal showing
that the COHIBA brand had been referenced widely in film,
television, music and other media, such as print and magazines
distributed in the United States and Canada. Habanos also adduced
expert evidence establishing that smokers are more likely consumers
of alcohol products and that there is a relationship in their mind
between these products.
Interestingly, no additional evidence was filed by Habanos in
the appeal to supplement its limited sales figures filed before the
Registrar. As a result, the Court only had the same "not
insignificant" sales figures for 1994-1999, that is, almost 15
years prior to its decision.
Despite this and the fact that the Court noted that Habanos
could have done more to establish direct knowledge of the COHIBA
brand by carrying out a survey of Canadian consumers, Madam Justice
Snider was satisfied by the strength of the expert evidence and
further noted that there was no doubt that television shows
referred to in that evidence, such as "Sex and the City"
and "The Simpsons," were widely seen by Canadians.
Hence, the Court essentially concluded that a trade-mark was
well-known, iconic and famous based primarily upon expert evidence
showing "use" of the trade-mark in films, television
shows and other media, despite having limited evidence of actual
use of the trade-mark in the market place and no evidence showing
direct knowledge by consumers.
This decision is a welcome development for trade-mark owners who
are in a position to show use of their brand in popular culture
because of product placement or otherwise, and who could now use
this evidence in Canadian opposition or infringement proceedings to
establish a brand's reputation and strengthen its scope of
We note that Cuervo has appealed the Federal Court's
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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