21 June 2013, but only published in the Industrial Property Bulletin no.
199/213, of 17 October, is an interesting judgment of the Portuguese Intellectual
Property Court, which annulled the Portuguese Trade Mark no. 488843 on the
grounds that the Applicant lacked legitimacy to proceed to its registration
(Case no. 228/12.0YHLSB, 1st Chamber e of the IP Court).
to the established facts, the Plaintiff's main activity is the operation
of private schools, one of them being “Colégio Vieira de Castro”.
Since 2008, this private school is commonly identified by the following sign:
September 2011, the Defendant applied for the registration of a sign identical
to the one used (but not registered) by the Plaintiff, aiming to cover educational
services (Portuguese Trade Mark no. 488843).
As no prior similar or identical trade mark was registered and no opposition
was presented, INPI granted the registration. It should be noted that the
Defendant had never owned any kind of educational establishment.
January 2012, the Defendant sent a letter to the Plaintiff, informing it that “Colégio Vieira de Castro was a private and
registered property” and showing its availability to discuss the use of its trade mark.
Following a meeting between the parties, the Defendant e-mailed the Plaintiff,
saying it was willing to assign its trade mark for EUR 3,000.00. Considering the situation to be unfair, the Plaintiff
initiated proceedings against the Defendant.
Under s.225 of the Portuguese Industrial Property Code, “The right to register a trademark belongs to
those with a legitimate interest, namely:
a) Industries or manufacturers, for the purpose of distinguishing
the products they manufacture;
b) Traders, for the purpose of distinguishing the
products they sell;
c) Farmers and producers, for the purpose of distinguishing
the products of their activities;
d) Artists and craftsmen, for the purpose of
distinguishing the products of their art, craft or profession;
e) Service providers, for the purpose of
distinguishing their respective activities.”
(e) states that a registration of a trade mark shall be refused if it contradicts
the above provision. S.265 (1) (b) states that a trade mark registration is
null and void when, in the process of granting it, s.238 (1) has been violated.
applying the referred to provisions to the case, the Court held that the
Defendant lacked any legitimacy to apply for the registration of the sign, as
it had never been its will to develop any activity covered by s.225. In fact,
upon analysing all the facts, the court found out that the Defendant’s sole purpose
was to register the trade mark and demand a compensation for its assignment.
Therefore, the registration of Portuguese Trade Mark no. 488843 was declared null
final note, the court denied that this could fall within any unfair competition
provision, since no facts supporting the existence of competition between the
parties were found. Notwithstanding this mention, the court advanced that, if
the Defendant was exploring any educational establishment, the circumstance that the sign
was being used by the plaintiff since 2008 was strongly supportive of the fact that
a situation of unfair competition was a possible outcome, regardless of the
applicant’s intentions, therefore fulfilling the grounds for annulment in s.266 (1) and 239
(1) (e). It should be noted that, although this solution is defended by several
people – including this blogger –, the protection of unregistered trade marks
through unfair competition is far from an easy task under the Portuguese law.
this outcome, the Plaintiff applied for and obtained the registration of its
sign as a trade mark – Portuguese Trade Mark no. 516070.
This blogger is certainly
happy with the outcome of this case, but he cannot be left to wonder if a provision similar to s.3(6) of
the Trade Marks Act 1994 (UK) should not be included in the Portuguese
Industrial Property Code (despite its “often
alleged, rarely proved” characteristic). In fact, although s.266 of the
Portuguese Industrial Property Code provides that any annulment action might be
proposed out of the 10-year expiry period if a trade mark was registered in bad
faith, this provision seem to be only applicable if one of the grounds of annulment is verified. In fact, no reference is made to this provision in the
described judgement and, as far as this blogger is aware, no other provision
makes any reference to bad faith in trade mark applications. Do any of the readers have a different opinion on this? I can only see s.326, which is a
criminal provision solely applicable to “patents,
utility models and registrations of designs or models”. Or, on the other hand,
the unfair completion clause and the legitimate interest provision are
sufficient to cover all the cases that might raise from bad faith