Legal Battle Continues: Gurkha vs. Davidoff Over ‘Year of the Dragon’ Trademark

A federal court judge has dismissed a specific claim in Gurkha’s lawsuit against Davidoff concerning dragon-themed trademarks. Judge William P. Dimitrouleas of the U.S. District Court for the Southern District of Florida ruled in favour of Davidoff by dismissing Gurkha’s request for declaratory relief on Count IV of their complaint.

This count sought a determination on whether the pending “Year of Dragon” trademark should be granted to K. Hansotia & Co., Inc., which holds numerous Gurkha-related trademarks.

In November 2022, K. Hansotia & Co., Inc. filed a trademark application for “Year of Dragon” for cigars. This application was opposed by Davidoff & Cie. SA, a subsidiary of Davidoff. As of now, the trademark application is still pending with the U.S. Patent and Trademark Office (USPTO). Late last year, Gurkha initiated a lawsuit against Davidoff, alleging that Davidoff’s Year of the Dragon cigars infringed upon trademarks licensed to Gurkha by K. Hansotia & Co.

Judge Dimitrouleas agreed with Davidoff’s motion to dismiss, reasoning that courts generally dismiss claims for declaratory judgment on pending trademarks to prevent bypassing the established trademark process. Moreover, he concurred with Davidoff’s argument that the parties involved in this claim were not the actual parties in the lawsuit. Specifically, the trademark in question was filed by K. Hansotia & Co., Inc., not the plaintiff, and was opposed by Davidoff y Cie SA, not the defendant. Therefore, there was no direct conflict between the actual defendant and plaintiff on this issue.
Despite the dismissal of Count IV, the lawsuit continues. Counts I and II allege violations of the Lanham Act, while Count III seeks damages for common law trademark infringement. These counts were not dismissed and remain active in the ongoing litigation.

Gurkha, owned by Kaizad Hansotia against promises that he would sell the business after racist statements on social media, claims exclusive licensing rights to various dragon-themed trademarks such as Dragon, Dragon Fire, Dragon Lord, Dragonslayer, Imperial Dragon, Red Dragon, and Royal Dragon. Unlike the contested “Year of Dragon” trademark, these other trademarks have already been granted.

Davidoff, with its Davidoff Limited Edition 2024 Year of the Dragon cigars, is a prominent player in the Year of the Dragon-themed cigar market, but it is not alone. Other companies, including 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 released Year of the Dragon-themed cigars. To date, Gurkha has only filed a lawsuit against Davidoff regarding this matter.