Facts
Lisbon Court of Appeal decision
Comment



On 23 May 2019 the Lisbon Court of Appeal found that Portuguese trademark 455669 BELCANTO, used by the chef José Avillez's famous Belcanto restaurant in Lisbon, was a "trademark with a reputation".

Facts

On 14 March 2016 the Portuguese trademark application 561896 BELCANTO was filed to cover wines in Class 33 of the Nice Classification. The application was granted by the Patent and Trademark Office (PTO).

The company Gonzalez, Garrido & Antela Lda, holder of the earlier Portuguese trademark registration 455669 BELCANTO, covering bar services, cafes and restaurants in Class 43, filed an appeal against the PTO's decision before the IP Court.

In its appeal, Gonzalez, Garrido & Antela claimed that the trademark 561896 BELCANTO imitated its prior mark given that the signs were identical and there was a similarity between the goods and services offered. Gonzalez, Garrido & Antela also sought to demonstrate that:

  • its prior trademark BELCANTO had acquired a well-known character and reputation in Portugal; and
  • use of the mark BELCANTO for wines was an attempt to take unlawful advantage of the distinctive character and reputation of the earlier trademark, thereby harming the rights holders.

However, the IP Court decided not to revoke the PTO's decision and found that no similarity between the goods and services covered by both trademarks.

Gonzalez, Garrido & Antela appealed the decision to the Lisbon Court of Appeal.

Lisbon Court of Appeal decision

On 23 May 2019 the Lisbon Court of Appeal delivered the following judgment:

  • The court found that the trademark 561896 BELCANTO imitated trademark 455669 BELCANTO and clarified that wines are goods similar to the restaurant and bar services covered by Gonzalez, Garrido & Antela's prior trademark, as they are complementary to each other, share the same distribution channels and are addressed to the same consumers.
  • The court qualified the prior trademark 455669 as a "trademark with a reputation", considering its relevance at national and international levels, and concluded that granting trademark 561896 would allow its rights holders to take unlawful advantage of the distinctive character and reputation of the prestigious prior BELCANTO trademark.
  • The court found that the registration of trademark 561896 was an act of unfair competition, stating that it was a clear attempt to:
    • take advantage of the goodwill associated with the prior BELCANTO mark; and
    • trick consumers in Portugal into believing that the wines covered by the trademark were associated with the BELCANTO restaurant or José Avillez.

Comment

The Lisbon Court of Appeal's judgment provides clarity on the similarity between goods and services within the legal framework of trademark imitation.

The judgment also shows that Portuguese case law is departing from the mere quantitative parameters of assessing the reputation of a trademark to focus on the relevance of a mark's national and international recognition, in this case the restaurant services associated with the BELCANTO trademark.

For further information on this topic please contact Paulo Monteverde at Baptista Monteverde & Associados by telephone (+351 213 806 530) or email ([email protected]). The Baptista Monteverde & Associados website can be accessed at www.bma.com.pt.