Davidoff Asks Court to Dismiss Gurkha’s Dragon Lawsuit

In December, Gurkha filed a lawsuit against Davidoff over the Davidoff Limited Edition 2024 Year of the Dragon. Gurkha claims that Davidoff’s Year of the Dragon cigar violates various trademarks that Gurkha is the licensee of. Now, Davidoff has responded to the lawsuit, asking a judge to throw it out.

The lawsuit itself is the second act of this dispute. 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. As such, that particular trademark is listed as opposition pending. That dispute has gone into detail about other questions, such as whether Davidoff has previously sold a cigar called Year of the Dragon and whether the term should be something that can be trademarked.

Gurkha is owned by Kaizad Hansotia. The company says that it is the exclusive licenseholder for various K. Hansotia-owned trademarks such as dragon, dragon fire, dragon lord, dragonslayer, imperial dragon, red dragon, and royal dragon. 

Davidoff has asked Judge William P. Dimitrouleas of the U.S. District Court of the Southern District of Florida to dismiss Gurkha Cigar Group, Inc. v. Davidoff of Geneva, USA, Inc. On Friday, Feb. 9, Davidoff filed two motions to dismiss, albeit one was denied without prejudice on the same day.

Davidoff’s updated motion to dismiss relies on three basic arguments:

1. Gurkha Doesn’t Own the “Dragon” Trademark — Davidoff claims that K. Hansotia & Co., Inc. is the actual owner of the Dragon trademark; Gurkha—the company suing—is a licensee of that trademark.
2. The Trademark Trial and Appeal Board Should Decide The Issue — Davidoff argues that the U.S. TTAB, a specialized trademark and copyright court, should (first) decide the pending dispute over Gurkha’s “Year of the Dragon” trademark instead of a federal court deciding whether Davidoff violated these other trademarks.
3. This Lawsuit Involves the Wrong Parties — In addition to arguing that Gurkha isn’t a party to this dispute, Davidoff claims that Davidoff of Geneva USA isn’t party to dispute as Davidoff & Cie SA is the company that has opposed the trademark.

This filing also reiterates some other arguments that have been made as part of the TTAB opposition, such as Davidoff arguing that “Year of the Dragon” is a reference to the years that the cigars were released and, therefore, shouldn’t be a trademarkable term like “2024.”

Since the lawsuit was filed, Gurkha announced four additional Year of the Dragon cigars, while General Cigar Co., Habanos S.A., Oliva, La Galera, Plasencia, Rocky Patel, and United Cigars have announced their own Year of the Dragon-themed cigars. It does not appear that Gurkha has filed lawsuits against any of these companies.