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IP Court refuses trademark application for PERUS due to risk of confusion with PETRUS trademark

An application for the Portuguese trademark PERUS for alcoholic beverages was opposed on the grounds of its similarity with the prior trademark PETRUS. The opposition was dismissed and the Portuguese Patent and Trademark Office (PTO) granted the application. The IP Court later revoked the PTO's decision and rejected the application for PERUS on the grounds of its likelihood of confusion with the prior well-known and reputed trademark PETRUS. The IP Court's decision was published in the Portuguese IP Journal on 17 October 2022.

On 26 April 2021, the company Eunea Investiments de Portugal, Lda filed an application for the Portuguese trademark PERUS for alcoholic beverages in class 33.

On 12 July 2021, the company Société Civile du Château Petrus opposed the application on the grounds of likelihood of confusion with its prior international trademark registration for PETRUS.(2) The PETRUS trademark had designated the Portuguese territory since 4 March 2014 and covered wines in class 33.

On 3 February 2022, the PTO granted Eunea Investiments de Portugal's trademark application, stating that:

• Société Civile du Château Petrus had failed to provide evidence of the PETRUS trademark's well-known character; and

• the conflicting trademarks gave dissimilar overall impressions. Specifically, the PTO opined that the terms "petrus" and "perus" were:

- graphically and aurally dissimilar, due to the presence of the letter "t" in the word "petrus"; and

- conceptually dissimilar – while "petrus" is a made-up word with no meaning, "perus" means "turkeys" in Portuguese.

The opponent filed an appeal with the IP Court.

The IP Court revoked the PTO's decision on 30 June 2022. The Court held that the terms "petrus" and "perus" were graphically and aurally similar as the presence of the letter "t" in the term "petrus" was not sufficient to render the words easily distinguishable for consumers. The IP Court therefore concluded that, overall, there was a likelihood of confusion and association for consumers.

The IP Court also recognised that PETRUS was a well-known trademark and thus that it enjoyed an enhanced protection. The Court also went one step further, stating that PETRUS refers to one of the best and most expensive wines in the world, the price of which can be more than €7,000 and which has been sold at auction for $1 million. Therefore, according to the IP Court, PETRUS had a reputation and the applicant's intention with its application for PERUS was to unduly benefit from it.

The IP Court held that the registration of the PETRUS trademark could lead to acts of unfair competition, given the strong similarities between the covered goods and the opposing signs.

The IP Court's decision is final.


08-11-2022  
 

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