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15 December 2003
However, the Court of Appeal subsequently overruled the decision, based on the fact that 'Hemingway' is a historic name - the name of an internationally renowned writer whose works are a part of the world's cultural heritage. In addition, it did not seem reasonable to assume that the use of the novelist's name as the name of a restaurant and bar would cause offence or dishonour to his reputation.
Moreover, there were no grounds to believe that the public would be misled as to the owners of the establishment or the origin of the products and services sold, and that the prohibition against unfair competition contained in the Intellectual Property Code would thus be infringed. The Court of Appeal rather considered that there was no possibility of generating confusion in order to obtain an illegitimate benefit through an act of unfair competition. The use of the name 'Hemingway' could only evoke certain associations of the writer, as would happen with any name. The author's name calls to mind his books and other aspects of his life - such as the Spanish Civil War, bullfights and the island of Cuba - which are completely irrelevant to fair competition concerns.
With regards to the rule under which a foreign-language name which is not a mere geographical description cannot be used unless requested by a national of the state in which that language is spoken, it was not proved - and was not even alleged - that the applicants for the registration were not North American. In addition, 'Hemingway' is the name of a person, and thus not a word in a foreign language in the sense of the provision of the Intellectual Property Code which would supposedly be infringed (Article 231(1)h)). Names do not necessarily relate to the language of the person using them. Further, when considering a historic name, consideration should be given to its universality and detachment from linguistic and territorial connections, since, as in the present case, there are several personalities linked to more than one country.
This case was submitted to the courts at a time when the former Industrial Property Code was still in force; under the provisions of the new code, which entered into force on July 1 2003, the use of foreign words and expressions as names of establishments is permitted.
A historic name cannot be regarded as a word which belongs to a certain foreign language, as in some cases it is impossible to determine accurately the origin of a given name. Borders shift, people emigrate and names which are associated with one language can actually belong to another.
Therefore, the use of historic names as names of establishments should be dissociated altogether from the use of foreign words.
The application for registration should thus have been accepted and the decision of the court of first instance was overruled.
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