Implementing regulation of Industrial Property Code in force

The Portuguese National Industrial Property Institute (INPI) has finally issued the last implementing regulation of the Industrial Property Code, in force since July 1 2003 (see New Portuguese Industrial Property Code comes into force). The regulation incorporates some provisions included in regulations issued last year (see INPI clarifies provisions of new Industrial Property Code), which have now been revoked.

The general provisions of the regulation can be summarized as follows:

• Industrial property rights owners, applicants or their representatives (industrial property agents and lawyers) may appear before the INPI. Unlike agents, lawyers must have been granted a power of attorney before they can act on a file.
  
  

• All the documents filed before the INPI must be signed either by the applicant/owner or its representative.
  
  
• A claim to a priority right must be supported by filed evidence.
  
  
• Clear rules are established with regards to deadlines and their extensions. The examination of an application may be suspended for four months by agreement of both parties.
  
  
• The INPI will confirm the existence of an IP right by issuing titles or certificates in accordance with the requirements in Rule 25 of the regulations.
  
  
• Fees must be paid for the services of the INPI (public entities are exempted).

A general provision first published last year is that either the assignor/licensor or the assignee/licensee may apply to register an assignment or licence of IP rights. This also applies to the registration of securities.

Rule 43 brings an important clarification as to the difference between provisional protection and provisional grant. An applicant receives provisional protection from the publication of the application in the Official Bulletin. Provisional grant confers a right to the applicant from the date it files the application. Provisional protection is applicable to all industrial property rights, while provisional grant is only applicable to utility models and designs.

Last year's regulations established that an 'informed user' must be considered when assessing whether a design meets the requirement of individual character. Rule 45 clarifies that an 'informed user' is someone who is not an expert, but who has a good knowledge of the product concerned. The 'informed user' falls somewhere between the 'consumer' considered in trademark law and the 'person skilled in the art' of patent law.

The regulation establishes the following rules regarding trademarks and other distinctive signs:

• The applicant must indicate the products or services for which the mark is intended, using the classes of the Nice Classification (Rule 47).
  
  
• The owner of an unregistered mark may file an application to register the mark within six months of the first use but must provide proof of use.
  
  
• The owner of a sign that reproduces names, flags or coats of arms, or makes any reference to an estate or property must prove its right to use such elements (Rule 50).
  
  
• Mark owners claiming that their marks are well known will have to file evidence of that fame to benefit from extended protection afforded to such marks.

Other important rules repeated from last year's regulations include the following:

• Trademark applications relating to pharmaceutical goods must be accompanied by a document stating that the manufacturer, the applicant or the product are duly licensed or authorized by the Portuguese Pharmaceutical Authority (INFARMED).
  
  
• Applications based on acquired distinctive character require evidence of how the trademark has achieved that status over the preceding five years and must show that consumers actually link the sign to the specific company that manufactures the products concerned.
  
  
• Where a mark has not been used for five years, any third party may commence a revocation procedure, during which the trademark owner will be given a deadline to file evidence of use. This evidence may consist of the product itself, orders, packages, invoices, statements of buyers, photographs, labels and advertising.
  
  
• Lack of use or the absence of a declaration of intent to use does not imply the automatic cancellation of the mark. The owner must be notified of any cancellation action and given two months to file evidence of use or a declaration of intention to use.

Gonçalo Moreira Rato, Moreira Rato & Associados, Lisbon