Supreme Court of Justice considers principle of priority of registration

Portugal

The Portuguese Supreme Court of Justice has considered the principle of priority of registration in a dispute involving a trademark and a corporate name (Case 30631/09.7T2SNT.L1.S1, February 9 2012).

Plaintiff Wall it - Sociedade de Decorações Lda brought an action against defendant Virtual Census Publicidade e Impressão Digital Lda requesting that the Lisbon Commercial Court of Justice:

  • order the cancellation of the national trademark WALL IT (Registration 440.840); and
  • prevent the defendant from using the expression 'wall it' to designate goods or services similar or identical to the plaintiff's goods and services.

On October 29 2008 the plaintiff had applied for a 'business name admissibility certificate', which corresponded to its corporate name Wall it - Sociedade de Decorações Lda. The plaintiff obtained the certificate on November 3 2008 and the corporate name was used in its articles of association (dated November 10 2009). Before the plaintiff was granted the certificate, the expression 'wall it' was already used by the managers of the company as a trademark to designate their interior decorating services in the course of their business relationship with several companies.

On January 2 2009 the plaintiff applied for the registration of the logo WALL IT (No 15593). On the same day, the plaintiff also applied for the registration of the national trademark WALL IT (No 442.796) to designate the following goods and services: 

  • adhesive bandages for stationery or domestic use; adhesives for stationery or domestic use; self-adhesive tapes for stationery or domestic use; stickers; tracing papers; tracing cloth in Class 16 of the Nice Classification; and
  • wholesale and retail trade of adhesive paper/tape/canvas.

However, when submitting its application for registration of the trademark, the plaintiff discovered that the defendant had already applied (on November 5 2008) for the registration of the national trademark WALL IT (No 440.840). The mark, which was published in the Portuguese Bulletin of Industrial Property of February 16 2009, covered interior decorating services in Class 42.

The National Institute of Industrial Property refused the plaintiff's application. The plaintiff brought an action before the Lisbon Commerce Court of Justice, requesting the cancellation of the defendant's WALL IT mark.

The Court of First Instance dismissed the action, and the decision was upheld by the Lisbon Court of Appeal. However, the Supreme Court of Justice upheld the plaintiff's appeal, thus revoking the decisions of the lower courts.

According to the Supreme Court, the priority of registration between a corporate name and a trademark must be assessed by reference to the date of the application for the 'business name admissibility certificate' and the date of application for registration of the trademark.

The Supreme Court ordered the cancellation of the defendant's WALL IT mark and ordered that the latter stop using the mark to designate goods or services identical or similar to the plaintiff's goods and services based on the following considerations:

  • the plaintiff submitted an application for the corporate name Wall it - Sociedade de Decorações Lda before the defendant applied for registration of the trademark WALL IT; and
  • the defendant not only used a trademark that included the corporate name of the plaintiff, but also offered services that represented the corporate object of the plaintiff's company.

This decision is important in that it demonstrates that, even where a trademark has a strong distinctive character, its significance will not undermine the principle of priority of registration; this principle applies not only to disputes involving two trademarks, but also to disputes involving a trademark and a corporate name.

Manuel Lopes Rocha and Joana Reis, PLMJ - AM Pereira Sáragga Leal Oliveira Martins Júdice E Associados - Sociedade De Advogados - RL, Lisbon

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