The Federal Court recently found the wide-spread fame of the COHIBA trade-marks for cigars and cigarillos was sufficient to reject an application to register the trade-mark LAZARO COHIBA for rum.

Tequila Cuervo (“Cuervo”) filed a trade-mark application in February of 1996, for the mark LAZARO COHIBA, in association with “alcoholic beverages, namely rum“, on the basis of ‘proposed use’ in Canada.  The application was opposed by Empresa Cubana Del Tabaco (“Empresa”) in November of 1998.

An applicant is generally not restricted from filing a trade-mark application for a name that is the same as, or similar to, an existing registered trade-mark, provided that there is a difference in the products and services. The Registrar of Trade-marks (the “Registrar”) rejected the opposition by Empressa in 1998; however, Empressa initiated appeal proceedings later that same year and the Federal Court ruled in its favour on October 4th, 2013. Cuervo has appealed the Federal Court’s decision.

It is interesting to note, there is normally an onus on the opposing party to show actual “use” of the trade-mark in the market-place. In this case, the Federal Court essentially ruled that a trade-mark could be considered iconic and famous based almost entirely on expert evidence referencing use of the trade-mark in television shows and movies. Empresa did not submit any evidence showing that Canadian consumers have direct knowledge of the trade-mark.

Trade-mark owners can now, apparently, establish use of their marks and associated ‘iconic’ status via product placement without having to demonstrate actual ‘use’ in the market-place.

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