Acquiescence to Trademark Use Also Applies to Other IP Rights

On November 5 1991 the Portuguese Companies Registry authorized the corporate name 'Caves MARQUÊS DE MARIALVA - Comércio de Vinhos, Lda'. The company was duly incorporated on April 21 1992 and was registered with the Cantanhede Commercial Registry on April 28 1992. The company's corporate purpose is trading in wine.

On May 25 1995 the Portuguese Industrial Property Institute registered the trademark MARQUÊS DE MARIALVA in relation to wine. The application had been filed by Adega Cooperativa de Cantanhede Lda on January 10 1989.

Adega asked the court to cancel the corporate name Caves MARQUÊS DE MARIALVA - Comércio de Vinhos, Lda, arguing that its trademark was confusingly similar - both graphically and phonetically - to the corporate name. It further argued that both companies appeared to attract the same kind of clientele, since both were involved in the wine trade and were based in the same location - Cantanhede. Adega also claimed that it enjoyed priority for the use of the distinctive expression 'MARQUÊS DE MARIALDA'.

Caves defended its position by stating that the proceedings seeking cancellation of the registration of its corporate name should have been filed by May 31 2000, as required by Article 215º of the Industrial Property Code 1995. This article provides as follows:

"Where the owner of a registered trademark has acquiesced, for a period of five consecutive years, to the use of a later registered trademark while being aware of such use, he shall no longer be entitled, on the basis of his earlier trademark, to request the annulment of the later trademark registration or oppose the use thereof in respect of the products and services for which the later trademark has been used, unless registration of the later trademark was effected in bad faith."

This rule also states that the five-year period is for cancellation and begins to run from the point at which the trademark owner learnt or should have learnt of the fact.

Caves also argued that while Article 215º of the Industrial Property Code refers only to trademarks, this principle should also apply to corporate names.

It further contended that since the Industrial Property Code 1995 only entered in force on June 1 1995, the proceedings should have been filed by May 31 2000, and that there was no bad faith in the registration of the corporate name 'Caves MARQUÊS DE MARIALVA - Comércio de Vinhos, Lda'.

The Supreme Court concluded that Article 215º of the Industrial Property Code 1995 applies to both trademarks and corporate names, since it specifies the consequences of acquiescence to the use of trademarks, the most important distinctive marks; the principle should also be applicable to other distinctive marks, such as corporate names.

This principle, which was already accepted by legal commentators and practitioners, has now been confirmed by the Supreme Court.

For further information on this topic please contact César Bessa Monteiro at Abreu Cardigos & Associados by telephone (+351 21 7231800) or by fax (+ 351 21 7231899) or by email (cesar.b.monteiro@abreucardigos.com).