One cannot always get it right. But how wrong can a judge be? The following case probably reaches a new extreme in Portuguese trade mark litigation.

Zambon, S.p.A. is the owner of International Trade Marks nos. 226434 “ZAMBON”, 509634 “ZAMBON” and  620243 “ZAMBON” and of Portuguese Trade Marks nos. 442613 “ZAMBON” and 442614 “ZAMBON”, which cover, among other products “pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans” (Class 05 of the International Nice Classification).

On 15 December 2010, Lusodiete – Complementos Fitoactivos e Dietéticos, Lda. applied for the registration of Portuguese Trade Mark no. 476186 “ZUMBIN” for “medicinal herbs” (Class 05 of the International Nice Classification). Zambon opposed such registration, claiming that the new sign was an imitation of the earlier registered trade marks. On 15 June 2012, INPI refused the opposition and granted the trade mark registration. Not happy with the decision, Zambon requested, under article 23 of the Portuguese Industrial Property Code, the revaluation of the procedure. INPI confirmed its prior decision (on 5 February 2013) and Zambon appealed to the Intellectual Property Code (Case no. 157/13.0YHLSB). On 12 November 2013, the Intellectual Property Court issued its ruling.

Comparing the products covered by the trade marks, the Court decided that there was a strong connection between medicinal herbs and the medicinal products covered by the Earlier Trade Marks and that, therefore, the products were similar. So far, so good.

The problem with this case is that the Court seems to be confused by its own analysis and comparison. In fact, instead of comparing the signs Zambon - Zumbin, the Court compared the signs Zambon – Zambin, stating that the sole difference between the signs was their final syllable and that both shared the same predominant element: «ZAM, a fanciful element which did not convey any particular significance or quality».

Considering the above, the Court stated that the average consumer would not be capable of distinguishing the two signs.  The (allegedly) sole existing difference (“IN” vs. “ON”) was not enough to differentiate the opposing trade marks, especially, since, in most of the cases, the signs would not be perceived simultaneously by the purchasers. As a result, the existing similarities were likely to confuse or mislead the costumers, leading them to think that ZAMBIN is a byproduct of ZAMBON (sic) and that both products have the same commercial origin. Therefore, there was a likelihood of confusion of the consumer, who would tend to associate ZAMBIN and ZAMBON to the same manufacturer. Due to the existence of likelihood of confusion between the signs, the Court also found that this registration could lead to unfair competition, regardless of the applicant’s intention.

Following the finding of existence of likelihood of confusion and possibility of unfair competition, the relative grounds of refusal provided for in articles 239 (1) (a) and (e) were present. As a result, the Court revoked INPI’s decision and refused protection to the Portuguese Trade Mark no. 476186 “ZUMBIN” (at this point, the Court got the sign right).

Despite of the fact that an appeal would necessarily lead to a proper revaluation of the case (although not necessarily to a new outcome), Lusodiete decided not to continue with the proceedings. That might be related to the fact that on 14 March 2011 it applied for the registration of Portuguese Trade Mark no. 480559 “ZUMBIN LUSODIETE”, which did not face any opposition and was granted by INPI on 27 May 2011.

The full text of this (unbelievable) decision can be found in Intellectual Property Bulletin no. 020/2014, of 29 January 2014.