Go Voyages fails to prevent use of 'go' mark

The Commerce Court of Lisbon has held that the mark GO ALENTEJO was not confusingly similar to Go Voyages SA's trademarks (Case No 731/08.7YLSB, March 26 2014, published in the IP Bulletin only in September).

Go Voyages, a French company, appealed against an order of the National Institute of Industrial Property allowing the registration of the national trademark GO ALENTEJO (Alentejo is the South-Central part of Portugal).

The appellant claimed to be owner of the Community trademark GO (No 742585), as well as the international trademark GO VOYAGES (No 766112), both in force in Portugal prior to the GO ALENTEJO mark. The appellant claimed that GO ALENTEJO was so similar to its own trademarks that it could mislead consumers and, as such, its use would amount to unfair competition.

The court established that, according to Article 222 of the Industrial Property Code, a trademark is a distinctive sign for products and/or services which enables consumers to identify the origin of such products/services. Owners are free to create their trademarks, although Articles 238 and 239 of the Industrial Property Code impose some legal restrictions. A trademark must comply with the following principles:

1. distinctiveness;
2. truthfulness;
3. novelty;
4. independence; and
5. legality.

The limitation laid down in Article 239(1)(a) requires that a trademark must be refused where there is "imitation or reproduction, in whole or in part, of an earlier trademark granted for identical or similar products or services that may mislead or confuse consumers or where there is a likelihood of association with another trademark". This limitation is the embodiment of the novelty principle. The violation of the novelty principle may represent an usurpation consisting of the reproduction (exact copy) or imitation (confusingly similar sign) of a previously registered trademark.

Although GO VOYAGES and GO ALENTEJO were both intended to cover the same services and, therefore, had the same marketing channels, the court ruled that, "despite both trademarks having the word 'go' in common, it was not one of the elements of the trademarks that allowed a comparative analysis". Further, "one of the trademarks emphasises the word 'voyages', [while the other emphasises the word] 'Alentejo'”. For the court, this meant that the trademarks were not similar. The fact that they were not similar graphically reinforced the court’s opinion.

The court concluded that GO ALENTEJO was not liable to mislead consumers and, therefore, there was no unfair competition. The average consumer would not associate the services provided by Go Alentejo with those of Go Voyages.

Underlying the court's ruling were two relevant concepts: the concept of 'imitation' and that of the 'average consumer'. The issue of imitation must be assessed based on the similarity of the sum of the elements that constitute a trademark, and not by focusing on the dissimilarities between the marks considered separately.

Moreover, the concept of the 'average consumer' is a benchmark used by the jurisprudence of the courts of the European Union. This means that the average consumer is a person who is reasonably well informed and reasonably observant and circumspect, taking into account relevant factors such as the social, cultural and linguistic environments. Thus, as stated by the court, in the case of a product generally consumed by people with a certain level of culture, confusion is less likely to occur than in those cases where a particular product is intended for a social group with lower cultural awareness. These two concepts were crucial when the court compared the trademarks at issue in order to assess whether GO ALENTEJO could mislead consumers.

Luís Pinto Monteiro and Manuel Lopes Rocha, PLMJ – Sociedade de Advogados RL, Lisbon