The expression “Viva la Vida” occupies an important place in the cultural and artistic legacy of Frida Kahlo. It appears in one of her most iconic still-life paintings, commonly identified as Viva la Vida, often referenced as her last work. The phrase, inscribed directly on to a slice of watermelon depicted in the painting, transcends its literal meaning and has come to represent a final affirmation of vitality in the face of physical decline. It was reportedly added only days before her death.
In this context, it is unsurprising that the Frida Kahlo Corporation, which manages the commercial exploitation of the artist’s legacy, has sought to secure trademark protection over the sign ‘Viva la Vida’. It is therefore particularly noteworthy that a dispute arose concerning the registration of a similar sign, ‘Viva a Vida’, by Lisboa Editora, S.A., a Portuguese publishing entity.
Following the proceedings, the Portuguese Institute of Industrial Property (INPI) issued a partial refusal, rejecting the application in relation to goods and services associated with editorial and publishing activities, while allowing registration for certain services in Class 41 of the Nice Classification; namely, those related to education, training, and cultural activities. This decision was challenged by the Frida Kahlo Corporation.
The case was then decided by the Portuguese Intellectual Property Court (Process No. 79/25.2YHLSB) and concerned the registration of the national trademark, which initially covered a broad range of goods and services across classes 9, 16, and 41.
Despite acknowledging the high degree of similarity between the signs, the court concluded that, with regard to the remaining services, primarily educational in nature, there was no sufficient affinity with the goods protected by the earlier trademark. As a result, it found no likelihood of confusion and confirmed the partial grant of the trademark.
Legal framework
Under Portuguese law, a trademark is defined as a sign capable of distinguishing the goods or services of one undertaking from those of others. Its function is therefore to ascertain the origin of products or services and to prevent consumer confusion.
The refusal of trademark registration is governed, inter alia, by Article 232 of the Portuguese Industrial Property Code (CPI), which precludes the registration of signs that constitute an imitation of an earlier mark. According to Article 238 of the CPI, imitation requires the cumulative presence of three elements:
Priority of the earlier mark;
Identity or similarity between the goods or services; and
Similarity between the signs, sufficient to create a likelihood of confusion or association in the mind of the relevant public.
These criteria reflect the well-established principles of EU trademark law, particularly the understanding that likelihood of confusion must be assessed globally, taking into account the interdependence between the similarity of the signs and that of the goods or services. This means that even a high degree of similarity between signs will not suffice where the goods or services are considered dissimilar, as both elements must be cumulatively satisfied.
The decision
In the case at hand, the court had little difficulty in recognising the strong similarity between the signs ‘Viva la Vida’ and ‘Viva a Vida’. The minimal linguistic variation, essentially the substitution of the Spanish article “la” for the Portuguese “a”, was deemed insufficient to eliminate the phonetic and conceptual proximity between the marks.
However, the decisive issue lay in the relationship between the goods and services covered by the respective trademarks since the earlier mark, owned by the Frida Kahlo Corporation, covered a range of goods, including products in Class 16 such as books, printed materials, and stationery. By contrast, the contested mark, following partial refusal, remained registered only for services in Class 41, specifically those related to education, training, and cultural activities.
The appellant argued that a relationship of complementarity existed between these goods and services, particularly between educational services and products such as books and teaching materials. On this basis, it contended that the coexistence of the two marks would give rise to a likelihood of confusion or, at the very least, to an association in the minds of consumers.
The court, however, rejected this argument. It emphasised that the comparison between goods and services must be based on objective criteria, including their nature, purpose, method of use, distribution channels, and target public. Applying these criteria, the court concluded that:
The goods in question – books, stationery, etc. – are tangible products, whereas the services at issue involve the provision of educational activities;
Their primary purposes differ, with the former serving as tools for writing or reading, and the latter consisting of the transmission of knowledge;
The relevant publics are not necessarily identical; and
There is no evidence of overlapping distribution channels.
On this basis, the court held that the goods and services were not sufficiently similar to give rise to a likelihood of confusion, thereby confirming the partial registration of the mark.
Critical assessment
The court’s decision reflects a traditional and structured approach to the assessment of similarity between goods and services, emphasising differences in nature, purpose, and distribution channels. From this perspective, the distinction between tangible products, such as books and stationery, and intangible educational services provides a coherent basis for excluding affinity and, consequently, the likelihood of confusion.
However, this reasoning may be considered overly formalistic. In practice, educational services are closely linked to the use of books, teaching materials, and other content, often forming part of the same commercial ecosystem. From the standpoint of the average consumer, particularly in educational contexts, such goods and services may be perceived as functionally interconnected, if not originating from the same undertaking. This is reinforced by the high degree of similarity between the signs, which the court acknowledged. Under the principle of interdependence, such similarity could justify a more flexible interpretation of affinity, especially where the risk of associative confusion cannot be entirely excluded.
Nevertheless, a broader interpretation of affinity entails risks, notably the overextension of trademark protection and the potential restriction of legitimate market activity. In this sense, Inventa supports the court’s restrictive approach since it balances the rights in question.
