Facts
PTO
IP Court
Lisbon Court of Appeal
In August 2021, the Portuguese Patent and Trademark Office (PTO) refused an application to register CAFÉ RITZ as a Portuguese trademark on the grounds of likelihood of confusion with the prior well-known RITZ logos and trademark. The IP Court and the Lisbon Court of Appeal later confirmed the PTO's decision. The Lisbon Court of Appeal's decision was published in the Portuguese IP Journal on 25 October 2022.
On 6 April 2021, three individuals filed an application to register CAFÉ RITZ as a Portuguese trademark for bar services in class 43.(1) No oppositions were filed.
On 17 July 2021, the PTO provisionally refused the application ex officio, on the grounds of likelihood of confusion with:
- the following prior Portuguese logos, both covering the economic activity of hotels with restaurants, owned by Hotel Ritz, SA:
- the international trademark PARIS RITZ HOTEL, designating the Portuguese territory since 23 March 1983, covering beverages in classes 32 and 33 and restaurant services in class 42 (currently, class 43), owned by The Ritz Hotel Limited.(4)
The applicants replied to the provisional refusal. However, on 20 August 2021, the PTO confirmed the provisional decision and refused the application. The examiner shared the views that:
- the services at stake were similar; and
- the conflicting signs were all composed of the common and dominant element "ritz". The remaining expressions were merely descriptive and therefore lacked distinctiveness.
The PTO also stated that RITZ was a well-known trademark, widely recognised by the average consumer, and that it enjoyed an enhanced protection.
The applicants filed an appeal with the IP Court. They argued that the services covered by the conflicting signs were dissimilar. Café Ritz was an old café in the city of Coimbra, serving beer, coffee and snacks, and it had a specific targeted consumer. It was therefore dissimilar from Ritz hotels and restaurants, and the average consumer.
Hotel Ritz filed a reply, invoking the likelihood of confusion with the prior well-known logo RITZ and requesting the refusal of the application for CAFÉ RITZ. The Ritz Hotel Limited filed no reply.
On 17 February 2022, the IP Court confirmed the refusal decision. It agreed with the grounds invoked in the PTO's decision and stated that Café Ritz's alleged seniority and location were irrelevant for its assessment.
The applicants filed a new appeal with the Lisbon Court of Appeal. Neither Hotel Ritz nor The Ritz Hotel Limited filed a new reply. On 4 August 2022, the Court clarified that the services at stake were similar and that CAFÉ RITZ was graphically and aurally similar to RITZ, thus making the conflicting signs confusingly similar for consumers. The Court also added that the likelihood of confusion and association was increased not only by RITZ's well-known character, but also by the fact that RITZ has a family of trademarks.
The Court of Appeal's decision is final.
For further information on this topic please contact Paulo Monteverde or Joana Cunha Reis at Baptista Monteverde & Associados by telephone (+351 213 806 530) or email ([email protected] or [email protected]). The Baptista Monteverde & Associados website can be accessed at www.bma.pt.
Endnotes
