Victory is sweet for CASA TAPADA wine mark owner

Portugal

In Casa da Tapada Sociedade Agrícola Lda v Sociedade Agrícola Herdade dos Coelheiros SA (Case 995/2004, October 4 2004), the Court of Appeals of Lisbon has upheld the plaintiff's opposition to the registration of VINHA DA TAPADA for wine.

Sociedade Agrícola Herdade dos Coelheiros SA (SAHC) applied to the Portuguese Industrial Property Institute (INPI) to register the mark VINHA DA TAPADA for wine. INPI allowed registration in spite of opposition from Casa da Tapada Sociedade Agrícola Lda - the owner of an earlier wine mark for CASA DA TAPADA.

On appeal, the Commercial Court of Lisbon reversed the decision and refused registration on the grounds that VINHA DA TAPADA was confusingly similar to the earlier mark. This time, SAHC appealed.

The Court of Appeals of Lisbon dismissed the appeal and upheld the lower court's ruling. Referring to previous cases, it held that the words 'vinha' and 'casa' (meaning 'vineyard' and 'house' respectively) used in the marks, as well as other words such as 'quinta' (farm), 'adega' (cellar) and 'monte' (estate), are generic and commonly applied to wines. As such, these expressions cannot serve to distinguish wine marks.

Thus, in the court's opinion, the distinctive element of the marks at issue was the name Tapada. As this element was identical for both trademarks, there was a risk that consumers would be mislead into thinking that (i) the later VINHA DA TAPADA mark had some connection with the earlier CASA DA TAPADA mark, or (ii) they belonged to the same owner, property or estate.

Gonçalo Moreira Rato, Moreira Rato & Associados, Lisbon

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