On 7 February 2019 the Lisbon Court of Appeal confirmed the decision of the 1st chamber of the Intellectual Property Court (IPC), on a case concerning the lack of use of the trademark ABANKA in the field of banking services. Both instances confirmed the Industrial Property Office decision to consider that the proofs of use filed by the trademark holder did not show genuine use of the mark in Portugal.
The case is interesting as it gets around the level of use and the type of proof required for a service trademark.
ABANKA VIPA d.d. is a Slovenian company owner of the International trademark registration no. 860632, a word and device mark, , claiming green (Pantone 327), for services in classes 35, 36, 38 and 42 and protected in Portugal since 2006. In class 36 the registration covers, inter alia, “banking services”, “credit and granting of credit”, “financing”, “insurance”, “real estate and property evaluations” and “real estate management”.
On 19 October 2015 ABANCA CORPORACION BANCARIA, S.A., a Spanish company, requested to the IP Office a declaration of cancellation of the ABANKA trademark on grounds of non-use for 5 consecutive years. ABANCA is the applicant of the potentially conflictive international trademark registration no. 1243627 covering identical services in the same classes and which had suffered an opposition filed by the Slovenian company.
On 22 September 2017 and despite the more than 30 documents filed by ABANKA as evidence of use, the IP Office considered that the evidence was not sufficient and cancelled the registration of the mark .
The trademark holder appealed to the 1st instance Intellectual Property Court.
The IP Court was also not convinced by the proofs filed and dismissed the appeal based on the following:
- The mark "does not appear as registered in the colour claimed, or does not appear at all” in a substantial part of the documents;
- Printings from the appellant’s website written in Slovenian are not proper evidence of use in the relevant territory, Portugal;
- Extracts from Google Analytics showing a number of users’ views of the said website from Portugal do not demonstrate use of the mark, as actual or potential clients may simply be in transit;
- Visa and Mastercard credit cards issued by the appellant concerning sporadic transactions with Portuguese entities and with no reference to the mark ABANKA are not suitable evidence of use;
- Email messages exchanged between the employees of the appellant and a Portuguese bank are documents of internal nature which do not show public use of the mark.
The Court of Appeal judgement confirmed the 1st instance court understanding.
Once again a trademark case illustrates the hurdle of proving genuine use through technically convincing evidence. The challenge will potentially increase with the new Industrial Property Code which introduces the “defense for non-use” in the Portuguese law in accordance with the EU Trademark Directive.