No Confusion Likely Between MARLBORO and MARBELO Marks

The National Intellectual Property Institute rejected the application of Portuguese company Empresa Madeirense de Tabacos, SA for the registration of MARBELO as a trademark for “cigarettes, tobacco, smoking products and matches”, on the grounds that the mark was an imitation of the existing MARLBORO trademark.

The Portuguese company claimed that the trademarks were graphically and phonetically different, and that there cannot be confusion between merely verbal trademarks and mixed (ie, verbal and figurative) trademarks.

For its part, Philip Morris argued that there was a risk of confusion both graphically and phonetically, or alternatively a risk of unfair competition.

The decision of the National Intellectual Property Institute was confirmed by the Lisbon Commercial Court on the following grounds:

• There was a risk of confusion and association between the trademarks;
  
  
• The registered MARLBORO trademark had priority over the MARBELO trademark;
  
  
• The graphical, phonetic and figurative similarities between the trademarks could confuse consumers; and
  
  
• The MARLBORO trademark is renowned both nationally and internationally.

The Portuguese company subsequently appealed the decision to the Supreme Court. It argued that the correct application of the legal criteria for imitation does not allow for confusion between a verbal and a mixed trademark. In order to analyze the risk of confusion, consideration must be given to the distinctive character of the verbal element. The trademark MARLBORO is a verbal trademark comprising an invented expression which does not correspond to any Portuguese word or expression. On the other hand, the trademark MARBELO is a mixed trademark composed of figurative signs and colours (black lettering on a white background, a golden symbol, large red stripes and narrow white stripes) and the combined use of the Portuguese words 'mar' (sea) and 'belo' (beautiful). The Portuguese company argued that it was extremely unlikely that Portuguese consumers would confuse the combined use of two Portuguese words with an expression with no meaning. It therefore maintained that there was no risk of confusion between the two trademarks and thus no unfair competition.

In reaching its decision, the Supreme Court analyzed Article 193 of the Industrial Property Code, which provides that a registered trademark is considered to have been imitated or misused where:

• the registered trademark has priority;
  
  
• both marks are intended to apply to identical or similar products or services; and
  
  
• graphic, figurative and phonetic similarities between the marks might easily confuse or mislead the consumer.

When comparing the similarity of the marks, one must consider the sign for which registration is sought and the existing impression created by the earlier mark. The comparison is thus effected intuitively, rather than by way of analytical dissection - that is, the overall impression is what must be taken into account. In the case of verbal marks, phonetics are more important than graphics since they are more instantly memorable. This is also true in the case of mixed trademarks, where the verbal element is the most important in assessing the risk of confusion.

In the case at hand the MARLBORO trademark had been registered in 1951 and thus had priority over MARBELO, and both trademarks were used in relation to cigarettes; so only one more requirement needed to be fulfilled for a finding of imitation. However, the Supreme Court ruled that this criterion was not met: a comparison between the trademarks revealed that there were no evident phonetic, graphic or figurative similarities that might mislead or confuse consumers. Phonetically, the expressions MARLBORO and MARBELO have different sounds. Graphically, the trademark for which registration was sought is a combination of two Portuguese words, while the existing trademark is an invented expression which does not correspond to a Portuguese word. Figuratively, the MARBELO trademark has a specific combination of elements and colours, whereas the trademark MARLBORO does not.

Confining its examination to the verbal element of the two trademarks, the Supreme Court considered that the differences were sufficient to enable consumers to distinguish easily between them. There was no risk of confusion for the average consumer, who would be unlikely accidentally to purchase cigarettes under another trademark when accustomed to buying them under a world-renowned and prestigious trademark such as MARLBORO.

Hence, the Supreme Court upheld the arguments of the Portuguese company and overruled the decision of National Intellectual Property Institute, thus granting registration to the MARBELO trademark.

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).