New Portuguese Industrial Property Code comes into force

The new Portuguese Industrial Property Code (Decree-Law No 36/2003) has come into force. The new code amends intellectual property (IP) law dating from 1995 and brings Portuguese legislation closer to the European Community legislation on, among other things, designs and trademarks.

The main changes are as follows:

• All exclusive rights are protected from the date their application is published in the Portuguese Industrial Property Institute (INPI) Official Bulletin.
  
  
• The principle of exhaustion is extended to the whole European Economic Area.
  
  
• A rights owner may obtain the restoration of its rights where the invalidity or loss resulted from its failure to meet a deadline.
  
  
• Arbitration appeals are available for all IP rights.
  
  
• The Lisbon Court of Commerce is the only court competent to decide on appeals from INPI. The Lisbon Court of Appeals is competent to hear appeals from the Lisbon Court of Commerce. Both courts are also competent to decide on judicial actions relating to Community trademarks and designs.
  
  
• The deadline for filing a judicial appeal is two months from the publication of INPI's final decision in the Official Bulletin.
  
  
• The Portuguese authorities (the police and courts) may seize any product suspected of being counterfeit.

The new legislation also affects designs, trademarks and logos in the following manner:

• It implements Directive 98/71 on the legal protection of designs.
  
  
• Registration of designs is extended from one to five years and may be renewed four times.
  
  
• INPI has to issue a decision on a mark's registration within 12 months of publication of the application in the Official Bulletin.
  
  
• The new code applies to new trademark applications and applications pending as of July 1 2003. However, applicants of pending applications filed before 1995 have to indicate before January 1 2004 whether they still manufacture the goods or offer the services in relation to which the application was filed. If this is no longer the case, the application will be rejected.
  
  
• The new legislation establishes a procedure for the conversion of a Community trademark application or registration to a Portuguese one.
  
  
• Obvious infringement of a third party's trade dress is introduced as a ground to refuse registration of a trademark.
  
  
• Registration and use of a trademark identical or similar to a well-known mark amounts to infringement if the junior mark takes advantage of, or is detrimental to, the distinctive character or the repute of the senior mark (even if the junior mark covers different goods and services from the senior mark).
  
  
• Registration of trade names, insignias and logos is reduced from 20 to 10 years.
  
  
• Unfair competition is no longer a criminal offence and therefore only carries a fine.

Gonçalo Moreira Rato, Moreira Rato & Associados, Lisbon