One of cases still pending on the Commercial Court of Lisbon (as we noticed previously, the Intellectual Property Court has now jurisdiction over trade mark issues) dealt with the refusal by INPI of the registration of International Trade Mark no. 929046 “WINHOUSE”:

On 25 September 2008, the registration of the trade mark had been refused under article 239 (a) of the 2003 Industrial Property Code, which stated that “Registration of a trademark will (…) be refused if it contains in some or all of its constitutive elements flags, symbols, crests, emblems or other signs of the State, municipalities or other Portuguese or foreign public bodies, without the appropriate permission, whether or not covered by Article 6-ter of the Paris Convention for the Protection of Industrial Property, of 20 March 1883” (a slightly different provision can be found today under article 238 (4) (a) of the Industrial Property Code).

FIRAT PLASTIK KAUÇUK SANAYI VE TIC. A.S., the Applicant, appealed against this decision, claiming that this sign has its predominant element its nominative part and that it did not reproduce the European Union flag. Further, it claimed that the sign would not disrespect or discredit the flag and that it would not restrict competition to an extent further that any other trade mark registration.

The end of this story was published on the Industrial Property Bulletin no. 249/2013 (30 December). In a very short decision (5 pages only), the Court held that none of the elements in the sign could be found to be predominant. The figurative element was composed by a 10 star colored drawing, but the relevant public would perceive easily that the nominative element would cover the two other stars that unite the circle. As a result, the sign would be recognized by the average consumer as a clear reference to the Flag of European Union.

Since the Applicant had not obtained the authorization to include (part of) the flag in its trade mark, the registration of the same had to be refused. Therefore, the Court affirmed INPI’s decision.

On an interesting note, according to WIPO's ROMARIN, the EU countries have not all dealt with this sign in the same way, with some of them granting it protection and others refusing its registration.