The Porterhouse group has expressed confidence that it can continue to use “The Port House” as the name for its chain of tapas bars, despite losing a legal row to register it as a trademark within the EU after running foul of a body established to protect the reputation of Port wines.
The EU Intellectual Property Office (EUIPO) ruled that the use of the name The Port House by the Irish brewing and bar/restaurant group could cause confusion among consumers who might think the tapas bars were associated with the famous sweet fortified wine.
EUIPO upheld a challenge by a Portuguese public institute established to certify and protect the use of the name "Port" for wine products made in the Douro Valley in Portugal.
The Porterhouse group’s business development director, Elliot Hughes, said the ruling was disappointing but added that further legal advice was being sought to see if it would be appealed.
“We hope that we will be able to retain the name but it is not something we will be able to register as a trademark if the ruling stands,” Mr Hughes said.
He added: “The trademark has been refused. However, this makes no impact on the restaurants going forward. We don’t expect to have any negative consequences from the decision.”
The Instituto dos Vinhos do Douro e do Porto (IVDP) claimed the name “Port” and other variations including “Port wine” have protected status under EU regulations since December 1991.
Unfair advantage
It claimed the protection also applied to products not belonging to the wine sector when use of the word “Port”, without due cause, would take unfair advantage of the distinctive character of Port.
The IVDP said the protection provided by the EU was the result of a long history that dated back many centuries, with wine specialists recognising the superior quality of wines protected by the protected designation of origin (PDO) “Port”.
The IVDP said it had made continuous and significant efforts to promote the PDO “Port” throughout the world and had spent significant amounts of money in the promotion and advertising of wine protected by it.
It claimed the Porterhouse’s proposed use of “The Port House” was “confusingly similar both visually, aurally as well as conceptually”.
The IVDP said the average consumer who saw the sign would be left wondering if the establishment in question was related to wine protected by the PDO “Port”.
It claimed the sign would lead to the exploitation of the worldwide fame and reputation of the Portuguese wine.
“The contested sign aims to benefit from the image of quality and tradition of the good protected by the PDO,” the IVDP said.
The Porterhouse group, which applied in 2019 to register “The Port House” as a trademark, argued that the word “port” had several meanings including its most common understanding as a place where ships could take shelter from storms or where cargo from ships was unloaded.
It said such a meaning prevented the public from thinking of the Portuguese wine, and its proposed trademark was incapable of exploiting the reputation of Port wines.
Guarantee of quality
However, EUIPO said it was clear that EU regulations recognised “Port” under its protected designation of origin list and its protected geographical indication list, which offer a guarantee of quality due to their geographical provenance.
It also observed that the word “porthouse” was the name given to a facility where Port was produced.
EUIPO said the fact that the Irish company wanted to register a two-word mark “Port House” does not prevent the public from associating it with the meaning of “porthouse”.
It ruled that the contested sign would be perceived by some consumers as a reference to an establishment where Port was either manufactured, sold or served.
EUIPO agreed with the IVDP that the use of “The Port House” sign would allow the Porterhouse group to take undue advantage of and exploit the exceptional reputation enjoyed by the Portuguese wine among European consumers.
The Porterhouse group operates four tapas bars under The Port House brand in Dublin – South William Street, Temple Bar, Camden Street and Dundrum – as well as a branch on The Strand in London.
Mr Hughes said the group hopes to reopen all its outlets in Dublin soon as all its branches have outdoor dining facilities.
