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19 September 2005
The Lisbon Commercial Court recently confirmed the decision of the National Industrial Property Institute to reject an application to register the term INTERNET.COM as a trademark. The rejection of a term comprised of words which are already part of common usage reflects Article 223 of the Portuguese Industrial Property Code, which enshrines a principle laid down in Article 6(5) of the Paris Convention for the Protection of Industrial Property and in the EU Trademark Regulation (40/94).
On a point of fact, the court considered that the words in the proposed trademark are regularly used by consumers when referring to the Internet. Notwithstanding the applicant's argument that the term should be considered as a whole rather than in its two parts, the court considered that the two words could not be used to distinguish products or services.
The applicant further argued that, even though the term INTERNET.COM might initially lack distinctiveness, it could become well known and thereby distinctive. In other words, the term could acquire a secondary meaning through its use by the company, which would lead consumers to associate it with certain products or services.
The court, however, considered that the applicant had failed to provide evidence of the category of consumers to which the term was known and which identified the term in question as a distinctive mark.
It held that the 'secondary meaning' argument cannot be applied to all terms lacking distinctiveness. The court adopted a restrictive interpretation of the legal provision on secondary meaning; it considered that authorizing INTERNET.COM as a trademark would prevent other entities from using the words and reiterated the need to leave such generic terms available in the interest of competition. The court maintained that the quality of the products and services provided by the applicant in the past was not a factor in this case. The true issue was that, were the trademark to be granted, other suppliers of similar products or services would be deprived of the use of these words, which would be to the disadvantage of consumers. The applicant could not be allowed to prevent its competitors from using such words in connection with the marketing of their products or services.
The applicant argued that, under Article 223(3) of the Industrial Property Code, the trademark could be granted without exclusivity of use in respect of the two elements of the term. This argument was also rejected: the court held that such a possibility arises only in cases where the trademark is composed of several elements, and where only one or two of those elements are not distinctive. In the present case, the trademark was composed of only two elements, neither of them distinctive. Were the trademark to be granted, the holder would have no exclusive rights and the trademark would be void.
The court therefore confirmed the ruling of the institute, not only on the grounds of lack of distinctiveness, but also in the interest of protecting competition in this specific market.
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 (firstname.lastname@example.org).
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César Bessa Monteiro