Requirements for revocation of trademarks explained

The Court of Appeal of Lisbon has held that the owner of the trademark SAIMA had successfully demonstrated that it had made genuine use of its mark (October 15 2009, published in January 2010).

The trademarks SAIMA and CASA DE SAIMA were registered by the Portuguese Institute of Industrial Property (INPI) for goods in Class 33 of the Nice Classification on June 26 1990 and March 26 2000, respectively. The owner of the trademark CASA DE SAIMA sought the revocation of the SAIMA mark on the grounds that its owner had failed to put it to genuine use for a continuous period of five years. 
Contrary to INPI, the Commercial Court of Lisbon held that the SAIMA mark had been put to genuine use for a period of five consecutive years, as required by EU and Portuguese rules. The owner of the trademark CASA DE SAIMA appealed.
The Court of Appeal first noted the following legal considerations:
  • According to EU and Portuguese law, a trademark owner is required to put its mark to genuine - and not token - use for a period of five consecutive years in order to maintain its trademark rights. If it fails to do so, the mark will be subject to revocation on the grounds of non-use. 
  • Portuguese practice differed slightly from EU law in that, in addition to the requirement of genuine use, the trademark owner had to file a declaration of intention to use the mark. Without this declaration, the trademark was not enforceable against third parties. Moreover, failure to file a declaration of intention could, on its own, constitute the basis for an application for revocation. Notwithstanding that fact, the existence of a declaration of intention did not exempt the trademark owner from putting its mark to genuine use. This specificity came to an end with the enactment of Law 143/2008, which removed the requirement to submit a declaration of intention periodically. The aim was to reduce the costs for obtaining and maintaining a trademark registration.
  • It is the owner of the mark whose revocation is sought that is required to prove that its mark has been put to genuine use. The applicant for revocation must produce only evidence of lack of use of the mark.
Based on these guidelines, the court stated as follows:
  • The applicant for revocation submitted statements by tradesmen and manufacturers from the hospitality and wine sectors showing that, at the relevant time, they were not aware of the trademark SAIMA, but knew the mark CASA DE SAIMA.
  • The owner of the SAIMA mark submitted evidence demonstrating that it had produced and marketed goods under the trademark SAIMA during the period under consideration.
  • It also submitted a magazine, published during the relevant period, which contained an opinion article accompanied by a photograph depicting a SAIMA-branded product.
  • It also provided invoices demonstrating the sale of SAIMA-branded products during the period under consideration.
In view of the foregoing, the court considered that the owner of the SAIMA mark had demonstrated that its mark had been put to genuine use - either by itself or with its consent - during the relevant period. The court thus dismissed the appeal and affirmed the decision of the Commercial Court of Lisbon.
Manuel Lopes Rocha, PLMJ - AM Pereira Sáragga Leal Oliveira Martins Júdice E Associados - Sociedade De Advogados - RL, Lisbon

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