Portugal’s new IP code, designed to harmonise national IP proceedings with European standards, might not be the revolution that some were hoping for, but it has certainly brought noteworthy developments to the national IP landscape. First, the new legislation eliminates the requirement for graphical representation in trademarks, opening the door for non-traditional marks to finally make their debut in the Portuguese market. Secondly, the law has expanded both the jurisdiction and workload of the National Institute of Industrial Property (INPI) by introducing genuine use as a ground for oppositions and preliminary refusals for trademark registrations and by transferring oppositions, cancellations and appeals from the judicial realm of the IP Court to INPI’s administrative sphere. This has received mixed reviews – while both measures may well reduce fees and therefore democratise these processes, some practitioners worry that they may be a strain on an already-understaffed INPI, which faced considerable technological setbacks throughout 2018.
Abreu Advogados ascends to the gold tier this year thanks to outstanding feedback. One service user comments: “Abreu is our primary and preferred firm for all IP cases in Portugal. We appreciate its straight-to-the-point advice and pragmatic assistance in trademark matters, particularly for availability searches, strategic legal advice and potential infringement actions. We would highly recommend Abreu to anyone with trademark matters in the country.” Team leader, and a fresh face in the WTR 1000 this year, Manuel Durães Rocha is a “highly experienced, smart and formidable” lawyer who will come to the rescue when demanding cases arise. “Very quick, effective and well-prepared,” Ricardo Henriques and César Bessa Monteiro Jr “know exactly how to treat their clients and cases and adapt their approach according to circumstances. They are always available to complete, clarify and discuss any matter until the right solution is found”. “Excellent and highly responsive,” Henriques possesses “a one-of-a-kind knowledge of the IP legal framework, market environment and business trends”. Bessa Monteiro Jr is “a true IP expert” and “well-respected, diligent and highly recommended in the field”, as is his father César Bessa Monteiro, whose “wealth of knowledge and experience” is unmatched in this jurisdiction. The recent arrival of experienced prosecutor António Andrade has bolstered the firm’s trademark offering. His strategic acumen and commercial nous delivers quality results on a national and international level.
Baptista Monteverde & Associados continues to amaze with its trademark work, as a competitor’s remark demonstrates: “I had a case against BMA, their opposition was impressive – extremely well written and thorough. It sure is a reliable and competent outfit in the field”. Leading the boutique alongside IAM Patent 1000 reference Felipe Baptista, Paulo Monteverde is a heavyweight in the Portuguese trademark litigation landscape, famous for his assertiveness-meets-excellence approach: “He’s an aggressive, renowned litigator who carries out the job to the highest standards.”
This is an established reference for legal work in Portugal thanks to its unique global reach and cross-sector capabilities. José Luís Arnaut, the high-profile managing partner, runs a robust IP practice with an enviable clientele – large multinationals in the clothing and cosmetics industries, for instance, have long been sold on the trademark services provided. Its secret? Steadfast high-quality service delivered on time, every time. Helping Arnaut to keep such high standards on the contentious side of the practice is Miguel Quintans, a wizard in trademark prosecution and portfolio management.
Garrigues’s IP professionals stand out for their wide-ranging backgrounds, multilingual abilities and excellent service, making “an extraordinary team of extremely client-oriented, proactive and available attorneys”. Heading the Iberian practice, highly reputed João Miranda de Sousa is “an outstanding trademark litigator and expert in the EU panorama”, possessing unique and impressive knowledge of EUIPO administrative procedures. “A very strong name in the trademark field,” the dually qualified attorney brings together “illuminating analyses of contentious trademark issues in both Portuguese and Spanish territories”. “Fantastic, knowledgeable and dedicated” Francisca Ferreira Pinto is also someone to reach out to when a trademark dispute ensues. Together, they have represented Portugal Ramos Vinhos in a mediatic 10-year dispute against Adega Cooperative de Borba concerning designations of origin – a complex landmark case that climbed all the way to the Supreme Court and featured a favourable intervention by the Court of Justice of the European Union.
Best known for its global prosecution and enforcement expertise – and particular proficiency in lusophone territories – Inventa is a dynamic Lisbon-based outfit with a footprint in Angola, Mozambique and Nigeria. “The firm is excellent at identifying and executing solutions to problems and enhancing clients’ brands. The practitioners there become part of your team.” Leading the way is Vitor Palmela Fidalgo, an ace at international brand expansion, rebranding, trademark auditing, strategic prosecution and oppositions. He has been cultivating an outstanding young ensemble whose members have all the right credentials – academic and otherwise.
Throughout its 70-year existence, J Pereira da Cruz has formed tight and long-lasting bonds with patrons because it tailors an excellent service to their individual needs. Technological sophistication, which always ensures the group’s smooth running and efficiency, is another hallmark of the eminent practice. Highly rated is Nuno Cruz, a “reliable lawyer with extensive experience” and a particularly deft touch in contentious matters. He has the support of IP doyen João Pereira da Cruz, whose knowledge of patent and trademark protection in Portugal is complete.
Morais Leitão, Galvão Teles, Soares da Silva & Associados
Described as “the ideal strategic legal partner” by brand owners, Morais Leitão is a top, progressive commercial law firm with its finger on the pulse of intellectual property. The close integration of its outstanding IP team with other departments results in holistic solutions to trademark problems. In Vasco Stilwell d’Andrade, the team has “the crème de la crème of IP lawyers”. “Vasco addresses issues thoughtfully and creatively, often thinking outside the box, but is also extremely efficient and, as such, represents excellent value for money. He is worthy of instructing on the most high-profile and big-ticket cases for the most prestigious brands.” While doing great things for a long and enviable list of patrons, the protection that he offers across more than 50 jurisdictions for Cristiano Ronaldo’s CR7 trademarks is especially notable.
Raul César Ferreira IP Consulting & Services
For over 90 years, “reliable, precise and attentive” Raul César Ferreira has been a trusted agency in Portugal for all trademark prosecution matters, as one service user’s comments prove: “we use the firm for filings, renewals and watch services, as well as oppositions, invalidations and nullity actions. I would definitely recommend them to any client with IP matters in the country”. Since its recent alliance with full-service SRS Advogados, patrons can also access the outfit’s transparent, accurate, cost-effective and personalised services for trademark litigation matters. For interested parties, João Jorge is a key point of contact.
Highly recommended on both sides of the contentious/non-contentious divide, Simões, Garcia, Corte-Real & Associados enjoys a stellar reputation in the Portuguese-speaking world, as evidenced by service users’ remarks: “SGCR belongs to the circle of outstanding IP boutiques in Portugal. It does our trademark prosecution work in several Portuguese-speaking jurisdictions and handles our litigation and infringement procedures in a responsive, attentive, cost-conscious and detail-oriented manner. The quality of the team’s work and its counselling is unchallengeable”. The stars of the show are António Corte-Real, João Luís Garcia and José Raúl Simões, whose combined expertise make the magic happen. “António is the first choice for litigation work in Portugal. He is not only incredibly smart but an amazing strategist, often three moves ahead of the opposition. This, coupled with his commercial awareness and desire to obtain the optimum result for his clients in a cost and time effective manner, makes him stand out from the competition”. Garcia provides “crystal clear and well-grounded legal advice”, being particularly reputed among Brazilian colleagues; while name partner Simões is a fine choice for design and trademark counselling.
A legal powerhouse comprising more than 440 professionals, VdA is an eminent name in the Portuguese IP sphere. Particularly well-known for its market-leading patent practice, the IP department is also well-equipped to deal with any trademark challenge that comes its way. The prestigious litigation area is pillared by António de Magalhães Cardoso, “a well-respected gentleman who is able to cover all grounds and possibilities in every case”.
Other recommended experts
Maria Cruz Garcia recently took her talents to ClarkeModet. The experienced IP strategist and patent and trademark attorney has assumed responsibility for managing the firm’s clients in the United Kingdom and Nordic countries. JE Dias Costa’s Gonçalo de Sampaio, a new name in the book, is a “wonderful practitioner” and an authority in trademark matters, having been heavily involved in the revision of the new IP code. Yolanda Busse Oehen Mendes & Associados’ very own Manuel Oehen Mendes is a thought leader in the field, lecturing frequently on IP topics. Ana Rita Paínho, who has recently moved her practice to Sérvulo & Associados, is “a very honest and dedicated trademark lawyer who is always available to discuss client matters and handpicks strategies to meet their needs”. “Fantastic in court” and “a great team leader”, Painho has been taking good care of patron Pêra-Grave in a longstanding dispute concerning the trademarks PÊRA-GRAVE and PERAMANCA. Ana Teresa Pulido, at full-service PLMJ, makes her debut in the guide this year on the back of peer referrals and her 30-plus years’ experience in trademark litigation.
- José Luís Arnaut - CMS Portugal
- António Corte-Real - Simões, Garcia, Corte-Real & Associados
- João Luís Garcia - Simões, Garcia, Corte-Real & Associados
- João Miranda de Sousa - Garrigues
- Paulo Monteverde - Baptista Monteverde & Associados
- Manuel Oehen Mendes - Yolanda Busse Oehen Mendes & Associados
- João Pereira da Cruz - J Pereira da Cruz SA
- Vasco Stilwell d’Andrade - Morais Leitão, Galvão Teles, Soares da Silva & Associados
- António Andrade - Abreu Advogados
- César Bessa Monteiro Jr - Abreu Advogados
- Nuno Cruz - J Pereira da Cruz SA
- Maria Cruz Garcia - ClarkeModet
- António de Magalhães Cardoso - VdA
- Gonçalo de Sampaio - JE Dias Costa Lda
- Manuel Durães Rocha - Abreu Advogados
- Francisca Ferreira Pinto - Garrigues
- Vitor Palmela Fidalgo - Inventa International
- Ricardo Henriques - Abreu Advogados
- Ana Rita Paínho - Sérvulo & Associados
- Ana Teresa Pulido - PLMJ - Sociedade de Advogados
- Miguel Quintans - CMS Portugal
- José Raúl Simões - Simões, Garcia, Corte-Real & Associados
- César Bessa Monteiro - Abreu Advogados