thelefty /
18 November 2014Trademarks

Benfica proves tough opposition in trademark clash

Portuguese football club Benfica has successfully fought off a “bad faith” Turkish trademark application made in the name of the club.

Sport Lisboa e Benfica, more commonly known as Benfica and one of Portugal’s most famous football clubs, had opposed the attempt by a Turkish leather and textiles company to register ‘Benfica’ as a trademark.

The application was filed last year at the Turkish Patent Institute (TPI) and was intended to cover leather items.

Benfica opposed the application in March this year on the grounds that its own name had acquired distinctiveness throughout history.

In its opposition, Benfica said it was founded in 1904 in Lisbon and had a rich history associated with its name and trademark, including winning the Portuguese league championship more than 30 times and the European Champions League twice.

It added that the ‘Benfica’ trademark was registered both in Portugal and in many other jurisdictions including Spain, Germany, France and Italy, and covered goods and services in various classes.

Hearing the case, the TPI referenced Turkey’s trademark legislation, the Decree Law on the Protection of Trademarks, which said that different applicants could file the same trademark as long they covered different services.

But, the Decree added: “Where in the case of a registered trademark or trademark application with a prior date of filing, the trademark has a reputation and where the use would take unfair advantage of the distinctive character, the trademark applied for shall be refused even if it is to be used in respect of differing goods and services.”

Rejecting the application and ruling that it had been submitted in bad faith, the office said: “In view of the well-known nature of the opponent’s trademarks, the registration of the disputed application would lead to the taking of unfair advantage of the well-known character of the opponent’s trademarks and damage their distinctive character and reputation.”

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