On 21 July 2011, Presspeople - Edição de Publicações, Lda. (‘PRESSPEOPLE’) filed an application for the registration of the nominative sign ‘COZINHA-DIA-A-DIA’ (in English, ‘Day-to-Day-Kitchen’) covering ‘Publications and magazines’.

Mr. Rodrigues, the owner of  Portuguese Trade Marks nos. 331812 ‘DIA A DIA’ (in English, ‘Day to day’) and 454442 ‘EMENTA DIA A DIA DE SEGUNDA A DOMINGO’ (in English, Day to day menu from Monday to Sunday, filed an opposition against such registration, claiming that there was a likelihood of confusion between the trade marks, all of them sharing the element ‘DIA A DIA’ (the opposing trade marks covered similar signs).

INPI accepted the opponent’s arguments and refused the registration on relative grounds on 27 January 2012. PRESSPEOPLE reacted against such decision, filing an appeal with the Intellectual Property Court, claiming that the other party did not own an exclusive over the noun ‘DIA-A-DIA’, as third parties owned trade mark registrations for the same products with the same element. The Intellectual Property Court dismissed the arguments presented by PRESSPEOPLE, holding that the existing graphical and aural similarities between the trade mark application and the earlier trade marks would not allow consumers to distinguish between the signs, being likely to lead them to error and/or confusion. It further noted that the nominative element and, in particular, the expression ‘DIA A DIA’ was the dominant one in the various registrations. As a result, the Intellectual Property Court upheld INPI’s decision, maintaining the trade mark registration refusal.

Not happy with the outcome and willing to exhaust all the possible appeals to secure its registration, PRESSPEOPLE took the issue to the Lisbon Court of Appeal, arguing that the word COZINHA was not present in any of the opponent’s trade marks, that such trade marks possessed distinctive elements that could not be found in the new trade mark and that the expression ‘DIA A DIA’ was an indication used, in trade, to designate the periodicity of the magazines (which were published on a daily basis) and, hence, was a generic element which should be ignored in the comparison between the signs.

On 29 October 2013, the Lisbon Court of Appeal issued its judgement and overturned the Intellectual Property Court decision and granted registration to the Portuguese Trade Mark no. 486570 ‘COZINHA-DIA-A-DIA’. Siding with the Appellant, the Court held that the expression ‘DIA A DIA’ was generic and that by itself would not grant distinctive character to a sign and, therefore, could not be exclusively owned by a single entity. Furthermore, it had not been demonstrated that such sign had acquired a distinctive character in relation to magazines; in fact, other trade marks existed that were composed by the same expression together with other elements. As a result, the Court held that any comparison to be made should be centred in the remaining elements of the earlier trade marks and found that those were not present in the Appellant’s registration. As a result, the average consumer (reasonably well-informed and reasonably observant and circumspect) would easily distinguish the opposing signs and no grounds for the refusal of the registration existed.

The first instance and the appeal’s court decision can be found in the Industrial Property Bulletin no. 025/2014, of 5 February.