As you well know, international trademarks are “immediately” registered, i.e.” immediately after” duly deposited at the WIPO…
Subsequently, the protection of the international trademark registration (“ITR”) is required in each member country, as per the respective national law.
In Portugal, according to article 253 of our Industrial Property Code (“IPC”), the different provisions of article 237 thereof (on the Portuguese trademark registration procedure) will also apply to the protection of ITR rights.
In view of the above, an ITR must be duly published in the Portuguese Official Gazette (“ Boletim da Propriedade Industrial”), for opposition purposes.
Oppositions are to be filed within the following two months. In case of opposition, the ITR owner will be duly notified and may file his reply within an equal term.
However, if there is no opposition, the Portuguese Trademark Office (“ INPI”) will have to make an important decision:
. either to definitively grant the required protection to the ITR in question;
-or, when the Examiner himself has disclosed any legal grounds for refusal, to refuse it, but only on a provisory basis;
In fact, paragraph 5 of article 237 (Vd. Annex I) stipulates the refusal cannot be definitive when there is no opposition (or when oppositions if any are not sufficiently grounded).
Our study case was decided under a very simple set of legal provisions (Vd. Annex I):
- Article 223,1-c) and d) of the IPC make it clear that signs exclusively built up from “generic”, “descriptive” or “usual” indications on the kind, quality, quantity, purpose, destination or origin of certain products or services are not registrable, as trademarks, because they have no distinctive character.
- Article 239,1-a) of said Code provides that a trademark application must be refused if it totally or partially imitates a prior trademark, registered for identical or similar products, so that the consumer may be led into error or confusion, including the “risk of association”.
As defined in article 245, a registered trademark is imitated by another one when, cumulatively:
- the registered trademark has got the necessary priority;
- both trademarks cover identical or similar products or services;
- there is a certain graphic, figurative, phonetic or other similarity between those two signs, in such a way that such similarity may easily mislead the average consumer or entail a confusing risk of association with the previously registered trademark;
- the consumer would not be able to distinguish the two different signs without careful comparative examination (“exame atento”).
Since, in our study case, the similarity of the products was rather debatable, it was absolutely necessary to convince the Examiner that there was no confusing similarity between the two signs: without it, there was no imitation and peaceful co- existence was legally possible…
ITR 912641 “CREMESSO” was duly published in Portugal, for opposition purposes. Since no opposition was filed, INPI has decided to refuse protection to ITR 912641, based on confusing similarity with ITR 783482 “CREMOSSO”, actually a word and device trademark, already protected in Portugal.
In fact, INPI has broad powers to decide, both on absolute and relative grounds of refusal.
However, according to already mentioned article 237 of the IP Code, the decision was taken on a provisory basis, subject to possible reexamination. For such purpose, the owner of ITR 912641 “CREMESSO” (hereinafter called the “Right Owner”) was duly notified to reply, within a one month legal term expiring on April 28, 2008 (Vd. Annex II, Doc. 2 and 3).
This term was extended to June 8, 2008, at the request of the Right Owner, having in mind the difficulty of the matter. Then, a proper reply was prepared and filed, before the extension period expired.
After carefully reexamining the case, INPI has revoked its provisory decision and granted the required protection to ITR 912641 “CREMESSO” ( Vd. Annex III and Doc. 4).
THE TWO SIGNS UNDER EXAMINATION
You are now invited to take a look into the two trademarks under examination.
The prior one, ITR 783482 (Vd. Annex II, Doc.1 ) is technically a “word and device trademark”, a mix of different elements, including: the “word” CREMOSSO, across a black square containing a circle with a schematic drawing of what might be a grain or a fruit cut in two…
The other one, ITR 912641, protection of which was at stake, consists of a single word:
Using the Portuguese terminology: the first is “uma marca mista” ( a complex or composite trademark) and the second is a purely “marca nominativa” ( a “nominative”, i.e. a word trademark).
Naturally, notwithstanding the fact that the overall impression of ITR 783482 is more complex, as it combines several elements, the possibility of a partial imitation was not excluded, “prima facie”. In other words: CREMESSO might well be an imitation of CREMOSSO.
Partial imitation is enough to justify a refusal, under Article 239,1-b) of the IP Code ( Vd. Annex I).
Obviously, the Portuguese Examiner was fascinated by the conspicuous similarity of the two “words”:
According to the famous “ Präghetheorie”, originated by German case-law, but also very popular in Spain and in Portugal, CREMOSSO would be the ”nuclear” or dominant element of the prior trademark, the design or figurative elements of which would become irrelevant.
Consequently, CREMESSO would technically be a partial imitation of already protected ITR 783482, in as much as it is graphically and phonetically similar to a key element of the latter: the “word” CREMOSSO.
However, this understanding was not acceptable. A more accurate interpretation of the applicable legal provisions would prevail.
THE RIGHT OWNER´S STRATEGIC APPROACH
In the opinion of the Right Owner, the Examiner was mistaken, when considering the “word” CREMOSSO as a “nuclear” element in ITR 783482.
As a matter of fact, this trademark contains other ingredients. To start with, one must eliminate generic or descriptive elements, if any… Before being qualified as the most important element - the supposedly “nuclear” element- CREMOSSO must present some distinctive character…
And the question is: is the “word” CREMOSSO really distinctive?
Against the Examiner´s position ( Vd. Doc. 3 of Annex II), the Right Owner sustained that CREMOSSO is a descriptive term, equivalent to the Portuguese adjective “cremoso” , that clearly means “creamy” - the quality of a liquid which seems like a cream…
As Luís Couto Gonçalves sharply pointed out, irrelevant modifications are not sufficient to convert a generic or descriptive expression into to a distinctive brand, because they are unable to cause a more “suggestive” meaning or add any distinctive power ( Vd. “ Direito de Marcas”, Almedina, p. 69).
On the other hand, Carlos Fernandez-Nóvoa underlined the prohibition of monopolizing generic/ descriptive terms: on the one hand, instead of indicating the origin of the products, those terms only generally inform the public on the more outstanding qualities or characteristics thereof; on the other hand, it is absolutely necessary to avoid any exclusive appropriation of said usual terms, which must be freely used by all the agents competing in the market (Vd. “ Tratado sobre Derecho de Marcas”, 2nd. Ed., p.186).
In view of the above, CREMOSSO did qualify as a descriptive term. Therefore, it had no distinctive character and only the “pictorial” elements of ITR 783482 might be relevant, in terms of possible imitation.
In other words:
Only the “figurative” elements of ITR 783482 could be taken into account to decide whether or not there was any confusing similarity between ITR 783482 and ITR 912641 CREMESSO. But, in practical terms, if you can easily associate the expression “Blue Bird”, for instance, with the picture of a bird painted in blue, the same expression, “Blue Bird”, is not comparable with a green circle over a black triangle…
As Fernandez-Nóvoa also mentioned, a “figurative” or device trademark can be compared with a “word” trademark, but only on the following condition: “the device trademark will be similar to a word trademark when the device trademark clearly and directly suggests a certain concept and, at the same time, the word trademark constitutes the obvious, spontaneous and complete denomination of the same concept.” ( op. cit. p.331).
The famous case “ Sabel BV v/ Puma AG,Rudolf Dassler Sport” illustrates the above referred legal requirement: the comparison of device trademarks must be effected under a
A NEW AND DIFFERENT TRADEMARK
In view of the above, it is not difficult to realize that, by contrast, ITR 912641 CREMESSO is a purely one word trademark…
…a trademark that, unlike ITR 783482, contains no design or pictorial elements
Nevertheless, contrary to CREMOSSO, the term CREMESSO is highly “expessive”- it contains and suggests a lot of meaning.
“This is what happens with expressive and very meaningful trademarks, the composition of which suggests certain products or services or the main features thereof; such “expressive” marks actually have an adequate distinctive capacity and are not under the registration exclusion that falls over descriptive signs” ( Carlos Olavo, “Propriedade Industrial”, 2nd. Ed., Vol.II, p. 86).
Because they are so “ expressive”, at least to the Portuguese public, the above signs cannot be considered as simply “descriptive”, for registration refusal purposes. And this is precisely the case of CREMESSO…
CREMESSO is a “new” expression, as it represents a synthetic combination of CREME and EXPRESSO:
CREM[E] + [EXPR]ESSO
Therefore, it condenses the “idea” of “cream” and the “idea” of “Expresso coffee”, becoming highly “ suggestive”, as a new brand, to distinguish coffeemakers and possibly other things, in the market…
When compared with the prior trademark (CREMOSSO) and even ignoring the additional, but necessarily substantial, figurative elements thereof, the new trademark (CREMESSO) has a much stronger impact, giving the consumer a different “overall commercial impression” .
- CREMOS[S]O means “creamy” and it must be considered as a descriptive term.
- Only the figurative elements of the prior trademark, ITR 783482, have got some distinctive character.
- ITR 912641 CREMESSO has no figurative composition and it is, in fact, a suggestive and expressive sign, transporting a strong distinctive potential.
- Consequently, it is logically and ontologically impossible to establish any confusing similarity between the trademarks under examination.
- IMPI was thus compelled to revoke its “provisory refusal” and to grant protection to ITR 912641 CREMESSO ( Vd. Annex III and Doc.4).
The Right Owner was naturally satisfied with the final outcome of the case (Vd. Annex IV and Doc. 5 and 6).
It would be far more complicated if, with a simple reply, the position of the Examiner had not been reversed…
Should INPI have confirmed its provisory refusal, an appeal from such definitive decision would be necessary. In other words, Court proceedings, normally involving a second instance appeal, would be required to nullify the INPI´s decision and to obtain protection of ITR 912641 CREMESSO in Portugal.
In alternative, the Right Owner might have resorted to arbitration, as foreseen in article 48 of the Portuguese IP Code.
In any case, a lot more time and money would have to be spent and, notwithstanding favourable and duly grounded and expectations, success would naturally be, as always, uncertain…