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Cuban Cigar Brands N.V v. Upmann Int'l Inc. - 457 F. Supp. 1090 (S.D.N.Y. 1978)

Rule:

A defendant's proof in its laches defense must show that plaintiff had knowledge of defendant's use of its marks, that plaintiff inexcusably delayed in taking action with respect thereto, and that defendant will be prejudiced by permitting plaintiff inequitably to assert its rights at this time. Obviously, whether the claim is sufficient to bar relief, depends upon a consideration of the circumstances of each particular case and a balancing of the interests and equities of the parties.

Facts:

Cuban Cigar Brands N.V (“Cuban Cigar”), owner of the mark "H. Upmann," sought declaratory and injunctive relief under the Lanham Act (Act), 15 U.S.C.S. § 1051 et seq., and the common law, to cancel Upmann International, Inc.'s (“Upmann International”) federal registration of the marks "Carl Upmann" and "Upmann's Repeater" and enjoin his further use of these marks, the name "Upmann" alone as a mark, and its adopted corporate name. Upmann International asserted the defense of laches, abandonment and the incontestability of its marks, and sought to dismiss the complaint. 

Issue:

Was Upmann International’s laches defense meritorious?

Answer:

No

Conclusion:

The court found there was "likelihood of confusion" under the Act. Cuban Cigar was entitled to the injunctive relief sought, because Cuban Cigar was not guilty of laches and Upmann International's use of Upmann in its marks was in bad faith so as to preclude its asserting that defense. Cuban Cigar’s mark was used nationwide prior to when Upmann International's marks were registered. As such, Upmann International's marks were not incontestable as against that of Cuban Cigar for, since Upmann International's use infringed Cuban Cigar's valid common law rights obtained long prior to Upmann International's registration, it had no shield of incontestability in a suit by Cuban Cigar to enforce that mark.

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