28/09/2021

馃崺 Portugal: IP Court refuses DOUGHNUTS AND COMPANY trademark due to risk of confusion and lack of distinctiveness

 Introduction

An application for the Portuguese trademark DOUGHNUTS AND COMPANY was opposed on the grounds of its similarity two prior Portuguese trademarks (Figures 1 and 2). The opposition was successful and the Patent and Trademark Office (PTO) refused the application on the grounds of likelihood of confusion. The decision was confirmed by the IP Court, but on slightly different grounds. The IP Court decision was published in the IP Journal on 7 September 2021.

Figure 1: Portuguese Trademark No. 316988

Figure 2: Portuguese Trademark No. 395368

Facts

On 22 April 2020 an application for the Portuguese trademark DOUGHNUTS AND COMPANY (No. 641400) was filed for "dough threads [doughnuts]; mixtures for dough threads [doughnuts]" in Class 30. On 30 June 2020 the company Bimbo Donuts – Iberia SA opposed the application on the grounds of likelihood of confusion with its prior Portuguese trademarks, both covering pastry and bakery products in Class 30:

  • No. 316988, applied for on 9 May 1996 (Figure 1); and
  • No. 395368, applied for on 10 November 2005 (Figure 2).

PTO

On 12 October 2020 the PTO refused the application, concluding that the mark DOUGHNUTS AND COMPANY reproduced the predominant elements of the opponent's trademarks, therefore generating a risk of confusion. The PTO also mentioned that even if a trademark is referred to by consumers as a generic designation, such trademark preserves its distinctiveness as long as it is also perceived as identifying the commercial origin of certain products, allowing its distinction from other products.

The PTO also stated that the opponent's trademarks were well-known trademarks and that the registration of DOUGHNUTS AND COMPANY would enable the applicant to unduly benefit from the opponent's reputation and lead to unfair competition actions.

IP Court

The applicant filed an appeal with the IP Court. However, on 12 May 2021, the Court dismissed the appeal. The Court shared the PTO's view that the mark DOUGHNUTS AND COMPANY reproduced the predominant elements of the opponent's trademarks, making the conflicting trademarks graphically, aurally and conceptually confusingly similar.

In fact, according to the Court, while "doughnuts" is generic and descriptive, the element "and company" is commonly used in commerce. Therefore, it held that the mark DOUGHNUTS AND COMPANY should be refused in any case on absolute grounds for being devoid of any distinctive character.

For further information on this topic please contact Paulo Monteverde or Joana Cunha Reis at Baptista Monteverde & Associados by telephone (+351 213 806 530) or email (paulo.monteverde@bma.pt or joana.reis@bma.pt). The Baptista Monteverde & Associados website can be accessed at www.bma.pt.