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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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FRIDAY, 14 FEBRUARY 2014
Portugal: WEBFÉRIAS = DOUBLEMINT

On 29 September 2000, Comunicus – Comunicação EmpresTrebuchet MS, Lda. (‘COMUNICUS’) applied for the registration of the Portuguese Trade Mark no. 350209 “WEBFÉRIAS” for services in classes 38 and 39 of the International Nice Classification. On 8 September 2003, INPI refused the registration stating that:

  • The sign was descriptive of part of the services covered in Class 38, since the sign was composed by the words “WEB” (an abbreviation of the expression World Wide Web, used as a synonym to the Internet) and “FÉRIAS” (Portuguese word for holidays) and the consumer would immediately link the sign to the provision of holyday related services through the Internet;
  • In relation to the remaining covered services, INPI held that the sign would deceive the public as to their nature, quality or utility, as, despite their meaning, they were not connected in any way to online activities or holydays.

The Applicant brought an appeal against that decision before the Lisbon Commercial Court, claiming that INPI should have granted the registration as the sign was composed by an agglutinated work. In a reasoned decision and after reviewing the applicable ECJ case law (Windsurfing Chimsee, Baby-Dry, Doublemint, Postkantoor and Biomild), the first instance court considered that the agglutination of the words “WEB” and “FÉRIAS” was not a sufficient innovation and that, as a result, the sign could not be registered and needed to be left free for trade use. INPI’s decision was, therefore, upheld.

Still unsatisfied with the decision, the Applicant filed an appeal of this decision to the Tribunal da Relação de Lisboa (Lisbon Court of Appeal). Two appeals and almost 14 years elapsed since the application for registration of the trade mark (a period of time during which COMUNICUS was dissolved), this procedure is finally over. On 12 December 2013, the Lisbon Court of appeal issued its judgment, fully upholding the first instance decision and confirming the refusal of the trade mark registration.

The (excellent) first instance decision and the appeal court judgement can be read in the Industrial Property Bulletin no. 024/2014, of 4 February.

Posted by: Pedro Malaquias @ 16.47
Tags: Portugal, INPI, Commercial Court, Appeal Court, Absolute Grounds, Baby-dry, Doublemint,
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