Federal Court of Justice does not allow appeal: Munich Higher Regional Court ruling on the use of designations such as "Cuba" and "Havana" now legally binding

The Cuban cigar manufacturer Corporación Habanos, S.A. had brought an action against the designation of cigars made from non-Cuban tobacco with "Cuba" and other Cuban designations of origin. After the Regional Court of Munich I upheld the action in its entirety and the Higher Regional Court of Munich dismissed the defendant's appeal at second instance, the Federal Court of Justice has now dismissed the appeal lodged by the defendant against the appeal not allowed by the Higher Regional Court of Munich. The judgment of the Munich Higher Regional Court is therefore final.

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Geographical indications of origin

The cause and subject of the legal dispute was the use of terms such as "Habano Seed", "Piloto Cubano", "Habano wrapper", "Habano Ecuador wrapper", "Habano seed wrapper from Ecuador", "Cubra - the noble fire of Cuban Criollo" or "Binder Habano Jalapa - Nicaragua" for cigars / cigarillos made from non-Cuban tobaccos. The core of the legal dispute was therefore the question of whether the geographical indications of origin "Cuba" or "Habano" - or indications derived from them - may be used for non-Cuban tobaccos, in particular if "de-localizing" indications such as Ecuador or Nicaragua are also used for the country of manufacture of the tobaccos thus labelled.

Such information is inadmissible

The Munich Higher Regional Court (case number 6 U 120/22) had confirmed that such claims are inadmissible, even if the tobacco grown outside Cuba had originated in Cuba because the seeds had been taken from there to other countries after the Cuban revolution. The court had left open whether such disputed claims were true, because in its assessment a seed originally grown in Cuba, which was propagated in another place over several vegetation cycles, cannot simply be equated with tobacco grown on Cuban territory. Rather, in addition to genetic characteristics, soil and climate conditions - the respective "terroir" - can also influence the characteristics and quality of the tobacco, especially as the annual tobacco plant has to be reseeded every harvest season.

The lower court

Description of the video.

With regard to the special reputation of "Cuba" and "Havana", the lower court, the Regional Court of Munich (case number 33 O 9392/20), had already stated that the island of Cuba and its capital Havana stand for an attitude to life, but also for cigar enjoyment. Therefore, in the opinion of the Regional Court Munich I, the designations "Havana" and "Cuba" in relation to cigars and their components have a corresponding reputation in terms of quality due to the quality and selection of the processed tobaccos and due to the method of production. The purchaser of such cigars - as well as a considerable proportion of non-smokers - associates a particular prestige with the designations.

The Higher Regional Court

The Munich Higher Regional Court confirmed this finding and stated that the respective consumer does not even have to be aware of the specific quality of Cuban tobacco products, rather the general - actually existing - perception that such products originating from Cuba have a special quality is sufficient. The Munich Higher Regional Court has thus expressly and once again confirmed the special reputation of the geographical indications of origin "Cuba" and "Havana".

The defendant's arguments were not accepted

The defendant further attempted to defend itself by arguing that the geographical indications of origin had developed into unprotected generic names or variety denominations. Like the Regional Court, the Munich Higher Regional Court also found on the merits that such a denaturation with the corresponding understanding as a generic designation does not exist in the relevant public, namely in particular - occasional - smokers of cigars or non-smokers who buy cigars as gifts.

Both instances

In the opinion of both instances, designations such as "Habano Seed", "Piloto Cubano" or "Habano wrapper leaf" unfairly impair the special reputation of the geographical indications of origin "Cuba" and "Havana" without justification. Additional indications such as "from Ecuador" or "Jalapa - Nicaragua" did not change this result. In the words of the Higher Regional Court of Munich: by using the disputed designations, the defendant is acting in the wake of the protected geographical indications of origin "Cuba" and "Havana" in order to benefit from their appeal, their reputation and their prestige and thus, by way of an image transfer, to transfer the associated quality expectations to its own goods.

Revision not admitted

The Munich Higher Regional Court did not allow an appeal against its ruling to the Federal Court of Justice. The defendant lodged an appeal against this and stated that a decision by the Federal Court of Justice on the objections raised by the defendant was necessary. The objections dealt with the questions of whether the plaintiff's alleged anti-competitive conduct precluded the success of the action, whether the designations of origin in question had degenerated into a generic designation, whether there was a fundamental need to keep them available for use for non-Cuban tobaccos and whether explanatory additions - such as an asterisk with a reference to tobacco cultivation outside Cuba - were relevant. The Munich Higher Regional Court considered all of these objections to be irrelevant.

The Federal Court of Justice has now ruled that the objections raised by the defendant do not prevail and that the further development of the law or the safeguarding of uniform case law does not require a decision by the Federal Court of Justice in other respects either (case reference I ZR 74/23).

The judgment of the Munich Higher Regional Court is therefore final.

About the subject matter

Corporacíon Habanos, S.A., based in Cuba, is exclusively responsible for the distribution and marketing of handmade Cuban premium cigars - the "Havannas" or "Habanos" - worldwide.

The 5^THAVENUE Products Trading-GmbH is the official sole importer of Habanos and Mini Cubanos in Germany. It distributes all 27 Habanos brands in around 350 different formats.

Both have long been convinced that references to alleged or supposedly original "Cuban seeds" are of little help to cigar smokers. Tobaccos are annual plants and adapt strongly to soils and climatic conditions; very different characteristics develop from the same seed in different growing areas within a short period of time.

Genuine Cuban seeds have been bred exclusively for Cuban tobacco production for many decades and are not exported. Added to this are the unique tradition of craftsmanship and the unique knowledge of the secrets of the best cigars.

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