On 20 December 2017 the Lisbon Court of Appeal revoked the decision of the 1st chamber of the Intellectual Property Court (IPC), which had found that a likelihood of confusion exists between the trademark PURA ENERGIA applied for in Portugal and the prior trademark PURE ENERGY a trademark registered at EU level. The court allowed coexistence of both marks considering the extreme weakness of the EU prior mark. The relevant decisions were published in the IP Bulletin of March 22, 2018.
Facts
In October 2016 PURAWORLDENERGY, LDA, filed at the Portuguese IP Office a national trademark application for a figurative mark with the following representation:
The application covered “electrical energy from non-renewable energy sources” and “electrical energy from renewable energy sources” in class 4. In the course of an ex officio examination the Portuguese IP Office refused the application on the basis of a risk of confusion with the EU trademark No. 06839401 PURE ENERGY, a word mark in the name of Pure Energy Centre Ltd.. The prior EUTM registration covers, inter alia, “hydrogen as a fuel for domestic and commercial purposes; hydrogen fuel for heating; hydrogen fuel for transport, especially vehicles such as cars and boats; hydrogen fuel produced using renewable energy sources, such as wind energy or solar energy” in class 4 and was granted by the EUIPO on 16/04/2012.
The applicant appealed to the 1st instance Intellectual Property Court arguing that there was no risk of confusion between the marks. By applying general legal concepts of trademark comparison, namely that where a word mark is compared to a figurative mark in principle the word elements will be dominant, the IP Court dismissed the appeal and confirmed the refusal decision of the Office.
The applicant then appealed to the Lisbon Court of Appeal. The applicant did not request invalidity of the prior mark to EUIPO and merely insisted on the graphical, aural and linguistic differences between the marks.
The Court of Appeal judgement
Firstly the 2nd instance judges confirmed that the EU trademark was registered for goods that should be deemed similar to the goods of the applied mark. Moreover they acknowledged that the figurative element of the applied mark is of no relevant impact for distinguishing the marks under comparison.
Furthermore the court found that PURE ENERGY or the Portuguese equivalent terms (“energia pura” or “pura energia”) are words of “common use” in “people’s everyday life” and consequently the prior mark should be deemed “extremely weak”. The court mentioned as an example that the law does not allow the registration of totally descriptive marks such as the mark PURA LÃ (meaning PURE WOOL) for clothing articles.
The court said: “such words or expressions can be incorporated in any mark but this cannot be granted exclusively to anyone, since nobody may have its monopoly under penalty of impairing the competition rules”. Consequently “a simple morphological change of the designation of the product/service or the mere addition of a minimally expressive figurative element can be enough for a finding of no risk of confusion”.
Hence the court revoked the 1st instance decision and ordered the granting of the registration to the applied mark.
In this case it is certainly puzzling that EUIPO has granted registration to the EUTM No. 06839401 PURE ENERGY to cover “hydrogen fuel” in particular when the European Office had already refused the registration of the same mark for similar goods on the basis of descriptive nature and lack of distinctive character (EUTM Application no. 003088821 PURE ENERGY filed by BP, plc for “gas” in class 4).
The decision is one among other decisions from Portuguese courts where the strength (not the validity) of a registered mark is questioned because the mark is made of terms which are in the dictionary even if it is the English or French dictionaries and those terms may often give an indication of characteristics of the goods. It may be difficult however to see a clear borderline between “extremely weak” and “invalid”.