OBELIX beats pub owner in bar name brawl
In Les Editions Albert René SARL v Madaleno (Case 482/99.1TBGLG), the Court of Golegã has ruled that the defendant's use of the name 'Obelix-Bar' for his pub infringed the plaintiff's rights in its OBELIX mark. The court also ordered the defendant to pay €1,500 in damages, demonstrating that Portuguese courts are now more willing to issue such orders, even where it is difficult to assess the exact level of damage suffered.
Albert René owns the intellectual property (IP) rights in the Astérix comic-strip books and cartoons. It has registered the names of various characters as trademarks, including the name 'Obelix'. João Paulo Silvestre Madaleno was using the phrase 'Obelix Bar - Pub Bar' on a sign outside his pub and he was also using the name 'Obelix' on one of the interior walls. Albert René brought a damages action against Madaleno alleging, among other things, that (i) his unauthorized use of the name 'Obelix' infringed its rights in its trademark, and (ii) he had deliberately chosen the name in an attempt to exploit the popularity of the Obelix character and attract more customers to his pub.
The Court of Golegã held that Madaleno's unauthorized use of the name 'Obelix' was in breach of Portuguese trademark and copyright law. Turning to the claim for damages, it noted that, pursuant to Article 494 of the Portuguese Civil Code, awards for damages must be equitable and calculated with reference to:
- the duration of the infringing act;
- the level of the defendant's responsibility for the infringement; and
- all other relevant circumstances.
The court held that because Madaleno had used the 'Obelix' name for four years without authorization, this was evidence that Albert René had suffered damage. It also held that although Albert René had failed to prove the exact amount of damage caused, it was willing to issue an order for damages on the basis of equity. This is in contrast to a number of other decisions, in which Portuguese courts have refused to order damages where the plaintiff has failed to provide evidence of the exact amount of damage caused.
In the case at hand, the court set the level of damages at €1,500.
For discussion of a case involving the OBELIX mark in Germany, see Supreme Court precedent rejected in MOBILIX Case.
Manuel Lopes Rocha and Sonia Vaz, Barrocas & Alves Pereira, Lisbon
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