The action was filed by Monaca (Molinos Nacionales C.A.) a company from Venezuela producing a special sauce under the mark La Comadre. The mark La Comadre (word and lady design format) is registered in Venezuela since 1984 and the corresponding label is used since 2000.

The defendant is a company based in Portugal that obtained a trademark registration for La Comadre (with the bottle label) for goods in class 30. The registration was granted in 2010 while the defendant was aware that the mark was used in Venezuela and in Portugal by Monacas.

The defendant claimed that the registration had the valid aim to protect its own trade of the goods La Comadre in Portugal. However the 1st instance court considered that the defendant’s application for registration is an act of unfair competition. The court found that use by the defendant of a very similar mark and packaging “is likely to trigger confusion as to the commercial origin of the products” and to “generate situations of competition that are contrary to honest norms and uses” being clear that this is the intention of the defendant. As such the court issued an order cancelling the Portuguese trademark registration and prohibiting the defendant from producing or marketing the sauce La Comadre.

The court of appeal dismissed the appeal and totally confirmed the IP court decision adding that “this type of behavior has the purpose of creating confusion in the consumer’s mind, the law requiring only the risk of confusion and not actual confusion”.