The BELENENSES name controversy involves the name and logo of the Football Club Os Belenenses (FC Belenenses), a one hundred year’s history and well-established Club of Lisbon, Portugal.
The Intellectual Property court granted a preliminary injunction request filed by FC Belenenses against Os Belenenses – Sociedade Desportiva de Futebol, SAD (Belenenses Futebol, SAD), the company that is actually using the name BELENENSES in the Portuguese football premier league (known as the NOS League). On 8 March 2019 the Lisbon Court of Appeals confirmed the decision in essence.
(figurative mark) (word mark)
Around 1999 the Football Club Os Belenenses (FC Belenenses), a past winner of the main Portuguese football league (1945-46), founded a public limited sports company under the name Os Belenenses – Sociedade Desportiva de Futebol, SAD (Belenenses Futebol, SAD).
FC Belenenses transferred to Belenenses Futebol, SAD the right of participation in the Portuguese premier league, now NOS League, and authorized use of its registered trademark rights on the name BELENENSES and its emblem under specifically agreed terms.
In 2012 FC Belenenses reduced their position as shareholder of Belenenses SAD to 10% and in 2018, due to conflicts between the parties, the trademark agreement was terminated. As a consequence, FC Belenenses eventually prevented use of its stadium and injuncted Belenenses Futebol, SAD for trademark infringement.
Belenenses Futebol, SAD invoked a legal right to use the name and symbol of BELENENSES in coexistence, claiming that, according to the law of sports companies, the professional football team of FC Belenenses and its identification elements have imperatively been incorporated in the defendant. Furthermore, the defendant claimed that the trademark agreement could not terminate as long as the plaintiff remained its shareholder. The defendant also alleged bad faith since the plaintiff has acquiesced the use of the mark for more than five consecutive years.
The court of appeals rejected the idea that, under the sports companies’ law, the transference of a right to use the trademarks of the founding club was imperative: “the right to use the Club's symbology and trademarks may be transferred to the new corporate entity or not, the law giving a “opt-in freedom for the founding Club”. Additionally the parties made a specific written “protocol” providing that the Club’s signs would remain in the Club’s ownership and “no right could be asserted by the SAD other than those foreseen therein”. The court also excluded the bad faith argument considering that the plaintiff was “defending its trademark right”.
Meanwhile FC Belenenses has established a new football team, which uses the BELENENSES trademarks, although playing in a different competition (II Division in the Lisbon League). The Club has made public on its website that it has formally requested that the Professional Football League ceases use of the name BELENENSES for identification of any participants in the NOS League.