IP Court rejects DONUTS AND COMPANY trademark due to risk of confusion and lack of distinctiveness – Commentary
Intellectual Property Court
An application for the Portuguese mark DONUTS AND COMPANY was opposed because of its similarity to two earlier Portuguese marks (Figures 1 and 2). The opposition was allowed and the Patent and Trademark Office (PTO) rejected the application due to the likelihood of confusion. The ruling was upheld by the Intellectual Property Court, but on slightly different grounds. The decision of the Intellectual Property Court was published in the Intellectual Property Journal September 7, 2021.
Figure 1: Portuguese brand n ° 316988
Figure 2: Portuguese brand n ° 395368
On April 22, 2020, a Portuguese trademark application DONUTS AND COMPANY (no.641400) was filed for ‘dough yarns [doughnuts]; mixtures for dough yarns [doughnuts]”in class 30. On June 30, 2020, the company Bimbo Donuts – Iberia SA opposed the application on the grounds of a likelihood of confusion with its earlier Portuguese marks, covering both pastry and bakery products of class 30:
- No. 316988, applied for May 9, 1996 (Figure 1); and
- no.395368, requested on November 10, 2005 (Figure 2).
On October 12, 2020, the PTO rejected the request, concluding that the DONUTS AND COMPANY mark reproduced the predominant elements of the opponent’s marks, thus creating a likelihood of confusion. The PTO also mentioned that even though a mark is designated by consumers as a generic name, that mark retains its distinctive character as long as it is also perceived as identifying the commercial origin of certain products, allowing its distinction from other products. ‘others products.
The PTO also stated that the opponent’s marks are well-known marks and that the registration of DONUTS AND COMPANY would allow the applicant to take unfair advantage of the opponent’s reputation and lead to actions of unfair competition.
Intellectual Property Court
The plaintiff appealed to the Intellectual Property Court. However, on May 12, 2021, the court dismissed the appeal. The Court agreed with the PTO that the DONUTS AND COMPANY mark reproduced the predominant elements of the opponent’s marks, rendering the conflicting marks graphically, phonetically and conceptually similar and confusing.
Indeed, according to the Court, while “donuts” is generic and descriptive, the element “and company” is commonly used in commerce. Consequently, it considered that the DONUTS AND COMPANY mark should be refused in any event on the absolute ground that it was devoid of any distinctive character.
For more information on this topic, please contact Paulo Monteverde Where Joana Cunha Reis at Baptista Monteverde & Associados by phone (+351 213 806 530) or by e-mail ([email protected] Where [email protected]). The Baptista Monteverde & Associados website can be accessed at www.bma.pt.