12 Sep
2018

Trademark procedures and strategies: Portugal

Baptista Monteverde & Associados

Legal framework

The relevant trademark legislation in Portugal is the Industrial Property Code, which was approved by Decree Law 36/2003 of 5 March 2003. The Industrial Property Code is currently being revised by the Portuguese Parliament and government and a new code is expected soon.

Unregistered marks

In general terms, trademark rights are only acquired through registration. Unregistered marks cannot award exclusive rights but can eventually be enforced on the grounds of unfair competition. However, the Industrial Property Code provides for one particular situation concerning unregistered trademarks and the right of priority: “Whoever uses an unregistered trademark for a period of no more than six months has the right of priority, during that period, to register the trademark and can oppose to any registration applications made by other entities.”

Registered marks

Any legal or natural person who has a legitimate interest can apply for and own a mark, in particular:

  • industries or manufacturers, for the purpose of distinguishing the products they manufacture;
  • traders, for the purpose of distinguishing the products they sell;
  • farmers and producers, for the purpose of distinguishing the products they produce;
  • artists and craftsmen, for the purpose of distinguishing the products of their art, craft or profession; and
  • service providers, for the purpose of distinguishing their respective activities.

No power of attorney is required if the trademark application is filed by an official IP attorney.

A trademark may consist of a sign or a combination of signs capable of graphical representation, including:

  • words (including the names of people);
  • designs;
  • letters;
  • numerals;
  • sounds; and
  • the shape of a product or its packaging, provided that it allows the goods or services of one company to be distinguished from those of other companies.

Trademarks may also consist of advertising phrases or slogans provided that they have distinctive character. Logos, musical jingles and colour combinations can also be registered.

The following may not be registered:

  • signs which are devoid of any distinctive character;
  • signs which consist exclusively of:
    • the shape resulting from the nature of the goods themselves;
    • the shape which is necessary to obtain a technical result; or
    • the shape which gives substantial value to the goods;
  • signs which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of the rendering of the service or other characteristics of the goods;
  • marks which consist exclusively of signs or indications which have become customary in the current language or in the established practices of the trade; and
  • colours, except when they are combined with other colours, graphics or other elements that have a distinctive character.

Procedures

Examination procedure

Once submitted, a trademark application is formally examined by the Patent and Trademark Office and is published in the Industrial Property Bulletin usually within two weeks.

Opposition

Opposition must be filed within two months from publication of the trademark application, which may be extended for one additional month, by means of a form immediately substantiated with the written statement of grounds and documentary evidence (if any). The applicant can present a counterstatement within two months, which may be extended by one month. The parties can present additional submissions until the examination by the Patent and Trademark Office.

Registration

Examination by the Patent and Trademark Office is usually completed within two to three months after the end of the deadline for the applicant’s counterstatement. Examination by the Patent and Trademark Office covers both absolute and relative grounds of refusal.

Even if no opposition is filed, if any absolute or relative ground of refusal is found the Patent and Trademark Office will issue a decision of provisional refusal. The applicant may respond to this decision within one month which may be extended by one month. The Patent and Trademark Office will then take a final decision to refuse or grant the trademark application. This decision is published in the Industrial Property Bulletin one week after it is made.

Removal from register

Revocation: A registration can be totally or partially annulled if the owner is not entitled to it, particularly if:

  • the mark does not rightfully belong to the owner;
  • it was granted in violation of third-party rights; or
  • there are relative grounds for refusal.

A registration cannot be annulled if the earlier trademark invoked in opposition does not satisfy the genuine use requirement. Revocation actions must be filed within 10 years of the date of grant, without prejudice to the right to request the annulment of a trademark registered in bad faith, for which there is no time limit.

However, if the owner of the earlier right has tolerated the use of the infringing mark for a period of five consecutive years – from the moment when the owner became aware of such use – the right to file an invalidity action lapses, unless the infringing mark was registered in bad faith, in which case there is no time limit for action by the owner of the earlier right.

The public prosecutor or any interested party can file such actions. When the decision becomes final, the court sends the Patent and Trademark Office a copy of the decision for publication in the Industrial Property Bulletin and for recordal in the respective file.

Non-use cancellation: Any interested party can request the Patent and Trademark Office to revoke a trademark registration if the mark has not been put to genuine use – as defined in Article 268 of the Industrial Property Code – for five consecutive years.

The burden of proof of use lies with the mark owner, who is notified and must respond to the revocation action within one month of notification (extendable by one month). If applicable, the owner or licensee must provide proof of use of the trademark, without which non-use is presumed.

At the end of the period for the filing of a reply, the Patent and Trademark Office will decide, within one month, whether to revoke the registration. Revocation takes effect only after it has been declared in proceedings held before the Patent and Trademark Office. Revocation is recorded and notice thereof is published in the Industrial Property Bulletin.

Surrender: A rights holder can renounce its trademark rights or withdraw an application, provided that it expressly declares this to the Patent and Trademark Office.

Nullification: In the case of invalidation on absolute grounds, a registration is deemed totally or partially null and void if:

  • its subject matter cannot be protected;
  • when the mark was granted, procedures or formalities essential to the grant of the right were omitted; and
  • public policy rules have been violated.

Nullity can also be declared where absolute grounds for refusal exist, excluding cases of acquired distinctiveness and secondary meaning. Nullity can be invoked at any time by any interested party.

The term for requesting the revocation of a mark for non-use starts from its registration date.

Timeframes

The trademark application procedure takes four to five months, provided that there are no objections. The trademark opposition procedure takes eight to nine months. The procedure for recordal of name change or merger takes two weeks, as does the renewal procedure.

Trademark searches

Trademark searches are available online and are free of charge. Online searches include trade names and slogans, but graphical mark searches are not available online.

Enforcement

In general terms, the enforcement of a trademark can be made on the following grounds:

  • the likelihood of confusion with an earlier mark;
  • unfair advantage of reputation of the earlier trademark;
  • damage to the reputation of the earlier trademark;
  • unfair competition; and
  • bad faith.

Remedies

The remedies available to trademark infringement are:

  • injunctions (seizure and destruction of infringing goods);
  • penalty for non-compliance with a court order;
  • damage compensation (for lost profits, infringer’s profits or a lump sum as a royalty fee);
  • moral damages; and
  • legal costs incurred in the investigation of the infringement and the lawsuit.

Civil proceedings

The IP courts were created in 2012 and since then enforcement jurisprudence has been revolutionised in relation to various IP rights, particularly regarding injunction proceedings, obtaining evidence and compensation. Obtaining preliminary injunctions, including ex parte injunctions, has also become much quicker.

Criminal proceedings

The following activities generate criminal liability:

  • the violation of exclusive rights;
  • counterfeiting, imitation and illegal use of a trademark;
  • the sale, circulation or concealment of products or articles;
  • the registration is obtained or maintained through abuse of rights; and
  • the registration of a non-existent or false act.

Administrative proceedings

The Industrial Property Code lists the following administrative offences:

  • unfair competition;
  • use of unlawful trademarks; and
  • invocation or undue use of private rights.

Arbitration

Extrajudicial resolution of disputes is available through the Arbitration Centre for Industrial Property, Domain Names, Companies and Designations, which was created in 2008 as an institutionalised arbitration centre under the patronage of the Ministry of Justice.

Border measures

Customs enforcement of trademark rights (and other IP rights) at the Portuguese border is governed by EU Regulation 608/2013. The Portuguese customs authorities may seize goods under their control which are suspected of infringing a mark upon prior request (through a customs action application) from the mark owner, or independently without any prior request.

Specialist courts

In Portugal, there is a specialised court which deals with IP matters called the Intellectual Property Court, which is located in Lisbon. The jurisdiction of the court covers the entire Portuguese territory (including the Azores and Madeira islands).

Damages

The Portuguese rules on damage compensation for trademark infringement are harmonised with the European principles resulting from the EU Enforcement Directive (2004/48/EC).

In determining the amount of compensation for damages, the court must take into account unfair profits of the infringer and damages and lost profits suffered by the injured party and consider the expenses incurred in the protection of the IP right and in the cessation of the infringement.

The court must also take into consideration the moral prejudice caused to the IP rights holder by the infringement. If the court fails to establish the amount of damages under these rules, and provided that the infringer does not object, the court may alternatively set the damages as a lump sum on the basis of royalties which would have been paid if an authorisation to use the IP right in question had been requested.

When the infringer’s conduct constitutes a repeated practice or proves to be particularly serious, the court may determine the damage compensation due with recourse to the accumulation of all or some of the types of damages available. This allows for punitive damages.

Under civil liability law, which may also be applied in IP infringement matters, besides the financial losses of the injured party, the indemnity should also include non-financial losses (eg, damages to image and reputation). The amount of non-financial damages is established by the judge based on equity, considering the circumstances of the case.

Interim relief

Preliminary injunctions are available. The grounds for the granting of a preliminary injunction differ depending on whether the infringement has already started or whether there is solely a threat of infringement.

In case of a threat of infringement, the mark owner must demonstrate ownership and the possible infringement of the trademark, the urgency of the preliminary injunction and the expected damages.

If the infringement has already started it is not necessary to present the expected damages, but just evidence of the ownership of the mark and its infringement. There is no time restriction for filing for a preliminary injunction.

Timeframes

A mark owner must file an action against a registration made in good faith within 10 years of application. There is no time limit for filing an action against a registration made in bad faith.

The resolution of an enforcement action at first instance usually takes around 18 months. The appeal process at second instance takes around 12 months.

Ownership changes and rights transfers

Assignment and licensing documents do not need to be notarised or legalised with apostille.

Licence

When a licence is duly recorded at the Patent and Trademark Office, the use of the mark by licence is deemed to constitute genuine use. If the licence is not recorded with the Patent and Trademark Office, for the use of the mark by licence to be considered genuine it is necessary to demonstrate that the mark owner has given permission.

Related rights

Logotype can be used to protect signs (names or logos) that distinguish shops or establishments. A logotype may be enforced against a similar trademark (and vice versa), provided that there is a likelihood of confusion.

Company names can be used to protect the name that identifies the company in the market. A company name may be enforced against a similar trademark (and vice versa), provided that there is a likelihood of confusion.

Copyright can be used to protect device marks that have artistic merit. Copyright can be enforced against a similar trademark provided that there is a likelihood of confusion.

Online issues

Trademark rights can be enforced on the Internet as well as against use in domain name registrations. There are no specific provisions governing this matter but the general principles of trademark law as provided in the Industrial Property Code allow for the online enforcement of trademarks.

The enforcement of a trademark against an unauthorised domain name is made through civil proceedings at the IP Court of Lisbon.

The association DNS.PT is responsible for the management, registration and maintenance of the country-code top-level domain for Portugal.

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Baptista Monteverde & Associados

Avenida Álvares Cabral 47, 1

Lisbon 1250-015

Portugal

Tel+351 213 806 530

Fax+351 213 806 531

Web www.bma.com.pt

Paulo Monteverde

Paulo Monteverde
Partner
[email protected]

Paulo Monteverde is a partner at Baptista Monteverde & Associados. He received his law degree from the Catholic University of Lisbon and postgraduate degrees in IP and information society law from Lisbon University. He is a member of the Portuguese Bar Association. He was vice president of the Portuguese Consultants IP Association (ACPI) and chaired the ACPI Disciplinary Board.

Mr Monteverde represents parties in litigation and provides legal advice in IP matters, pharmaceutical law, software licensing, database protection and anti-counterfeiting. He is an IP arbitrator at the Portuguese Arbitration Centre, a member of the Geographical Indications of MARQUES, the International Trademark Association Unfair Competition Sub-committee, the European Communities Trademark Association, the International Federation of IP Attorneys and the International Association for the Protection of Intellectual Property.