New specialized IP court proposed
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The government is discussing a new draft law proposing the creation of a specialized IP court. In addition, a new arbitral tribunal has been created to deal with disputes involving trademarks, patents, company names and domain names.
2008 is proving to be a turning point for Portugal's IP system. The new IP Rights Enforcement Law (16/2008), which implements the IP Rights Enforcement Directive (2004/48/EC), has recently entered into force (for further details please see "IP Rights Enforcement Law enters into force - at last"). This law marks the start of a new era in the enforcement of IP rights in Portugal.
However, concerns are now raised about the application of the law by the courts. Portugal currently has two commercial courts (in Lisbon and Gaia) with jurisdiction over civil IP matters. As these two courts also have competence in the field of insolvency, IP cases can take several years to be decided. Criminal cases may also take several years to be resolved, and the penalties imposed by the criminal courts are often inadequate.
The new draft law on judicial organization thus proposes the creation of a specialized court with jurisdiction over IP matters, including copyright and neighbouring rights. At present, the draft law contains only a few articles dedicated to the new court and merely foresees the creation of a 'prototype' court in Lisbon. According to the draft law, the new court would also have jurisdiction over appeals from:
- certain decisions issued by the National Institute of Industrial Property; and
- administrative fines imposed by the institute.
Nevertheless, many questions remain to be answered during the discussion of the proposal before Parliament.
In addition, the new arbitral tribunal (named Arbitrare), which opens for business today, will hear disputes between private parties. The creation of this tribunal is the result of an initiative launched by the Ministry of Justice with the support of the registry for the '.pt' country-code domain name and the Portuguese Industrial Association, among other organizations. The model for the resolution of domain name disputes will be that of ADR.eu, the alternative dispute resolution provider for '.eu' domain name disputes. The majority of the tribunal's activity will be carried out online.
These developments represent a significant step forward in the resolution of IP disputes. However, the following issues remain to be addressed:
- Magistrates and arbitrators must improve their expertise, especially with regard to new technologies and domain name disputes.
- The issue of damages must be tackled. Currently, the courts have difficulties in assessing damages in cases of trademark, patent and copyright infringement. The new arbitration tribunal, which will have competence to decide on damages, could provide valuable guidance to the courts.
Manuel Lopes Rocha, AM Pereira Sáragga Leal Oliveira Martins Júdice E Associados - Sociedade De Advogados - RL, Lisbon
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