MARLBORO and MARBELO are not confusingly similar

The Portuguese Supreme Court has accepted Empresa Madeirense de Tabacos SA's (EMT) application to register the mark MARBELO for "cigarettes, tobacco, smoking products and matches".

The Portuguese Industrial Property Institute (INPI) had refused EMT's application on the grounds that the mark was an imitation of the famous MARLBORO trademark for the same goods. The decision was affirmed by the Lisbon Commercial Court and by the Lisbon Court of Appeals, which reasoned that:

• the registered MARLBORO mark had priority over the MARBELO mark;
  
  
• the graphic, phonetic and figurative similarities between the trademarks could confuse consumers; and
  
  
• the MARLBORO trademark is renowned both nationally and internationally.

On appeal to the Supreme Court, EMT argued that the correct application of the legal criteria for imitation does not allow a finding of confusion between a verbal and a mixed trademark (ie, a mark that contains both verbal and figurative elements). It argued that in order to analyze the risk of confusion, consideration must be given to the distinctive character of the verbal element in each mark. MARLBORO is a word mark comprising an invented term that does not correspond to any Portuguese word or expression. On the other hand, MARBELO is a mixed trademark composed of figurative signs and colours (black lettering on a white background, a golden symbol, large red stripes and narrow white stripes), and the Portuguese words 'mar' (meaning sea) and 'belo' (beautiful). EMT further argued that it was extremely unlikely that Portuguese consumers would confuse the combined use of two Portuguese words with an expression with no meaning. It therefore maintained that there was no risk of confusion between the two trademarks and thus no unfair competition.

The Supreme Court reversed the Lisbon Court of Appeals' decision. It analyzed Article 193 of the former Industrial Property Code (corresponding to Article 245 of the IP Code in force since July 1 2003 - see New Portuguese Industrial Property Code comes into force), which provides that a registered trademark is considered to have been imitated or misused where:

• it has priority over the allegedly imitating mark;
  
  
• both marks are intended to apply to identical or similar products or services; and
  
  
• graphic, figurative and phonetic similarities between the marks might easily confuse or mislead the public.

When comparing the similarity of the marks, one must consider the sign for which registration is sought and the existing impression created by the earlier mark. The comparison is thus made intuitively, rather than by way of analytical dissection - that is, the overall impression is what must be taken into account. In the case of word marks, the phonetic elements are more important than graphics since they are more instantly memorable. This is also true in the case of mixed trademarks, where the verbal element is the most important when assessing the risk of confusion.

In the case at hand, the MARLBORO trademark had been registered in 1951 and thus had priority over MARBELO. Additionally, both marks were used in relation to cigarettes. However, the court ruled that the remaining criterion to make a finding of imitation was not met: there were no obvious phonetic, graphic or figurative similarities that might mislead or confuse consumers as:

• MARLBORO and MARBELO have different sounds;
  
  
• MARBELO is a combination of two Portuguese words, while MARLBORO is an invented expression that does not correspond to a Portuguese word; and
  
  
• the MARBELO trademark has a specific combination of elements and colours, whereas MARLBORO does not.

Confining its examination to the verbal element of the two trademarks, the Supreme Court considered that the differences were sufficient to enable consumers to distinguish easily between them. There was no risk of confusion for the average consumer, who would be unlikely to purchase accidentally MARBELO cigarettes when accustomed to buying cigarettes bearing the world-famous trademark MARLBORO.

Hence, the Supreme Court allowed registration of the MARBELO trademark.

Gonçalo Moreira Rato, Moreira Rato & Associados, Lisbon