Portugal: Invocation of the lack of genuine use of a trademark in response to provisional refusal. The case of the national trademark «LUQUILUQUI”

30 November 2022

The current Portuguese Industrial Property Code (CPI) which is in force since 1 July 2019 maintained the principle of ex officio examination, with the PTO having the power to refuse a trademark application on relative grounds.

However, in that code, the legislator introduced an administrative mechanism that gives interested parties a simplified instrument that allows them to invoke the non-serious use of an earlier trademark to avoid the refusal of a new trademark, in order to prevent exclusive rights from unjustifiably hindering the registration of a new trademark.

According to Article 230 of the CPI, if the provisional refusal is based on the existence of an earlier trademark that has been registered for more than 5 years (on the date of the filing date of the application under examination, or of its priority) the applicant, in the response to the provisional refusal, may request that the owner of the earlier trademark be notified to file evidence of use.

If the latter, within the legal period of one month, which may be extended for another month, does not present proof of use, or reasons justifying non-use, the INPI does not convert the provisional refusal based on that prior right into a definitive one and the trademark, if it meets the other requirements, can be granted.

The omission or insufficiency of evidence does not imply the cancellation of the earlier registration, but rather its unenforceability.

On the contrary, if the owner of the previous trademark files evidence that proves serious use during the period in question, or that there was a justified reason for lack of use, and there is no change in the assessment made in the provisional refusal, this is subject to a definitive decision and, consequently, the trademark is refused.

The invocation of lack of genuine use therefore constitutes an important means of reaction by a trademark Applicant in response to the provisional refusal decision on relative grounds.

But it is also a relevant mechanism for protecting the interests of the proprietor of the earlier mark who, not having filed an opposition against the application for registration of the new mark, may avoid the grant of registration of that identical or similar mark by means of a simple administrative procedure in which he has been notified of the provisional refusal and to submit evidence of use.

The invocation of lack of genuine use is an important means of defense for the Applicant of a trademark.

In a recent case, in which no opposition was filed, the INPI provisionally refused national trademark No. 666850 LUQUILUQUI (word) to cover goods in Class 25 on the ground that it was an imitation of EU trademark No 2779874 LUCKY LUKE (word). To overcome the provisional refusal, the Applicant for that registration made use of the mechanism described and requested that the proprietor of the earlier mark be notified to prove that it has been put to genuine use.

H&A was pleased to represent the proprietor of the earlier mark before the PTO and was able to prove the genuine use of the mark LUCKY LUKE in the EU.

On re-examination, the PTO acknowledged that the evidence submitted by the proprietor of the earlier opposing mark was unequivocal and demonstrated genuine use in respect of the goods for which it was registered in Class 25, and decided to convert the decision provisionally refusing the mark LUQUILUQUI into a final decision refusing it.

Furthermore, the INPI maintained its understanding that the sign LUQUILUQUI, although worded differently, is phonetically quite similar to the earlier mark LUCKY LUKE, which protects identical goods, and that there is therefore a likelihood of confusion, as well as a risk that consumers will associate them with the same business origin or believe that there is a close relationship between the entities that propose to advertise them on the market.

The possibility for the owner of the obstructing trademark to submit evidence of use when requested by the Applicant in the response to the provisional refusal is a simple mechanism, but one that should be carefully observed by the owner of the earlier trademark in order to prevent the PTO from granting registration of a new trademark identical or similar to its own to cover identical or similar products/services. Only in this way he will effectively protect his rights not only formally, but also substantively.

Although the owner of the trademark of the most famous comic strip cowboy, LUCKY LUKE, could later, and within five years of the granting of the registration, file a petition to cancel the registration of the trademark LUQUILUQUI, he would have to face a procedure substantially more complex, time consuming and expensive.