INPI clarifies provisions of new Industrial Property Code

Portugal

The Portuguese National Industrial Property Institute (INPI) has issued several regulations in order to clarify certain provisions of the new Industrial Property Code, which came into force on July 1.

The clarifications regarding trademarks are as follows:

  • Lack of distinctiveness at the time of application will result in a refusal to register the mark. However, a trademark that has acquired distinctiveness through use over the previous five years may be registered if the applicant can prove that consumers associate the mark with its goods or services.

  • Trademark applications for pharmaceutical products must include a document stating that the manufacturer, the applicant or the product are duly licensed or authorized by INFARMED, the Portuguese pharmaceutical authority.

  • Genuine and effective commercial use of a trademark (as defined in the Industrial Property Code) implies continuous, concrete acts directed at consumers.

  • INPI or any third party may apply for the cancellation of a trademark that has not been used for five years. The trademark owner will be given the opportunity to present evidence of use. The evidence may consist of orders for products, packaging, invoices, statements of buyers, photographs, labels and advertising.

The new regulations also specify that, when assessing whether a design meets the requirement of distinctiveness, 'informed user' means someone who is not an expert but has a good knowledge of the product concerned.

An important clarification relating to the code's general provisions concerns the difference between provisional protection and registration. An applicant is granted provisional protection for its industrial property (IP) rights from the date of publication of the application in the Official Bulletin. In the event that there is (i) no opposition to an application, or (ii) no need for a detailed examination, provisional registration will be allowed. This gives the applicant rights from the date of the application (as opposed to the date of publication) but only applies to utility model or design registrations.

Lastly, the regulations specify the procedure for the assignment of IP rights:

  • Either party may request registration of the assignment by paying the necessary fee and presenting documentary evidence of the assignment to INPI.

  • Either party to the transaction can also request the registration of licences from INPI by paying the required fee and presenting evidence of the agreement.

  • Following registration, a notification of assignment must be published in the Official Bulletin.

For background information on the new Industrial Property Code, see New Portuguese Industrial Property Code comes into force.

Gonçalo Moreira Rato, Moreira Rato & Associados, Lisbon

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