Last June 22nd the Lisbon Court of Appeal confirmed the decision of the 2nd Section of the Intellectual Property Court (“IPC”), which refused the registration of the national trademark Guaraná Brasil (figurative). The decision was published in the Bulletin of October 18th, 2017.
This case shows that in a dispute regarding trademarks only, it is possible to succeed in claiming copyright protection over the figurative element of word and device trademarks.
In July 2001 Unicer Bebidas de Portugal SGPS, SA, filed the trademark application no. 357.798 Guaraná Brasil to cover guaraná drinks from Brasil in class 32 which had the following represention:
The said application was opposed by Companhia Brasileira de Bebidas SA (now Ambev, SA). The opponent filed the national application no. 358.312 for the mark Guaraná Brahma (figurative) in August 2001:
The decision at issue rejected the earlier application of Unicer and granted the application lodged by Ambev. On appeal to the 1st instance court, Unicer argued, among other points, that the opponent was not entitled the right to the trademark’s device, since he was not the copyright owner regarding that image. The question remained to know who the owner of the copyright over the device included in the trademark no 357.798 was.
The IP Court judgement
The IPC decision begins by stating that, as a rule, the author - that is, the intellectual creator of the work – is the holder of the exclusive right to benefit from and use the work, in whole or in part, meaning that he has the legal power to disseminate, publish and economically exploit the work. It also the author who, likewise, grants the authorization of use or exploitation to third parties and, if he wishes to, to transfer his patrimonial rights covered by his copyright.
In this case, the opponent succeeded in proving his copyright on the device included in the trademark mark 357.798. A substantially similar image had been used as a label for drinks by the opponent in Brazil, long before the date of the opposed trademark application in Portugal.
The labels are as follows:
Label used by the Appealed party in Brazil Label for marketing in Portugal
The proof regarding whom has commissioned the work (which pointed to the opponent) and the proof made of the assignment of the device’s copyright [patrimonial right] in favor of the opponent, was essential to reach this conclusion.
Unicer claimed copyright over the device for the work’s adaptation to Portugal (that is, by the inclusion of the word Brazil instead of Brahma). However it was not proved that the appellant had commissioned any work, namely the execution of the label or of the image’s adaptation to Portugal. The intervention of the appellant was not deemed to be decisive. Furthermore the Court stated that the new device could not qualify as an original work because it did not consist of a “personality mark resulting from the author’s effort”, since the signs were the almost the same in their device elements. Consequently, the small modification of the text, from Brahma to Brazil, was considered not to bring any originality.
Risk of confusion
Finally, the Court held that, since the differences between the signs are practically none, there is a likelihood of confusion and association between the goods and services offered and provided by the two companies and, consequently, the possibility of practice of acts of unfair competition.
The Court of Appeal fully upheld the judgment.
The present case demonstrates that it is possible to invoke copyright over the device element of word and device trademarks within disputes regarding trademarks and where there is a claim of imitation or of likelihood of confusion between signs.
It also recalls that it is important to substantially prove the commission of the work or the development of the device by the author, in order to determine who the holder of the copyright of such device is. Moreover, it reminds us how important it is to gather written proof of the work’s commission or evidence supporting that such work was developed within a contract of employment, for instance, and also to keep written proof regarding the transfer of the patrimonial rights included in copyright (which are associated with economic exploitation) by the intellectual creator to a third party, which shall respect formal requirements.
It recalled us, albeit indirectly, that it is important to pay attention to the formal requirements for a transmission of patrimonial rights included in copyright (which, in the Portuguese case, must be made by a public deed), in order to be able to argue, at the right moment, a possible failure in such transfer procedure which can lead to its invalidity due to lack of form.