Court Dismisses One Part of Gurkha’s Year of the Dragon Lawsuit Against Davidoff

A federal court judge has dismissed one part of Gurkha’s lawsuit against Davidoff over dragon-related trademarks.

Judge William P. Dimitrouleas of the U.S. District Court for the Southern District of Florida sided with Davidoff in its efforts to dismiss Gurkha’s request for declaratory relief on Count IV of the complaint, which would have likely resulted in a ruling over whether a pending “Year of Dragon” trademark should be granted to K. Hansotia & Co., Inc., a company that holds a multitude of Gurkha-related trademarks.

In November 2022, K. Hansotia & Co., Inc. filed for a trademark on “Year of Dragon” for cigars. Davidoff & Cie. SA, a Davidoff company, opposed that trademark. The trademark application remains pending with the U.S. Patent and Trademark Office (USPTO). Late last year, Gurkha filed a lawsuit against Davidoff, claiming that its Year of the Dragon cigars violated the trademarks that K. Hansotia & Co. had licensed to Gurkha.

Dimitrouleas sided with Davidoff’s request for dismissal, citing that courts typically will dismiss claims for declaratory judgment on pending trademarks because doing so would allow an entity to bypass the normal trademark process by asking a federal court to decide the matter. Furthermore, he also agreed with Davidoff’s argument that this claim should be dismissed because of the parties involved.

This lawsuit is Gurkha Cigar Group, Inc. v. Davidoff of Geneva, USA, Inc. However, the trademark was filed by K. Hansotia & Co., Inc.—not the plaintiff—and the trademark was opposed by Davidoff y Cie SA—not the defendant. As such, Dimitrouleas found that on this issue there wasn’t an actual conflict between the defendant and plaintiff as the matter is between two other entities.

While Dimitrouleas dismissed Count IV, the lawsuit remains ongoing. Counts I and II deal with violations of the Lanham Act, and Count III is a claim for damages due to common law trademark infringement. Counts I-III were not dismissed.

Gurkha is owned by Kaizad Hansotia and the company says that it is the exclusive license holder for various K. Hansotia-owned trademarks such as dragon, dragon fire, dragon lord, dragonslayer, imperial dragon, red dragon, and royal dragon. Unlike the Year of Dragon trademark, those other dragon-related trademarks have been granted.

While Davidoff—with its Davidoff Limited Edition 2024 Year of the Dragon cigars—has the most prominent Year of the Dragon release, it’s hardly alone. Asylum, De Los Reyes, Drew Estate, El Septimo, General Cigar Co., Habanos S.A., J.C. Newman, JM Tobacco, La Galera, Oliva, Maya Selva, Plasencia, Rocky Patel, United Cigars and Vega Fina have also introduced Year of the Dragon-themed cigars. So far, only Davidoff has been sued by Gurkha.

Charlie Minato

I am an editor and co-founder of halfwheel.com/Rueda Media, LLC. I previously co-founded and published TheCigarFeed, one of the two predecessors of halfwheel. I have written about the cigar industry for more than a decade, covering everything from product launches to regulation to M&A. In addition, I handle a lot of the behind-the-scenes stuff here at halfwheel. I enjoy playing tennis, watching boxing, falling asleep to the Le Mans 24, wearing sweatshirts year-round and eating gyros. echte liebe.