Trademark procedures and strategies: Portugal
This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight
Trademark protection is acquired through registration and the law provides that the rights in a mark belong to whoever applies to register that mark first (Article 11 of the code). Apart from cases of unfair competition and bad faith, the code sets down four situations in which the owner of an earlier unregistered right can oppose the grant of a previously applied-for registration.
Legal framework
The Portuguese IP system is regulated by the Industrial Property Code, which was approved by Decree-Law 36/2003 (as amended).
Portugal is party to the following international treaties:
- the Paris Convention for the Protection of Industrial Property;
- the Madrid System for the International Registration of Marks;
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Trademarks;
- the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
- the Trademark Law Treaty; and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).
In addition, Portuguese legislation incorporates:
- the EU Trademark Directive (89/104/EEC);
- the EU Community Trademark Regulations (40/94 and 207/2009); and
- the EU IP Enforcement Directive (2004/48/EC).
Unregistered marks
Trademark protection is acquired through registration and the law provides that the rights in a mark belong to whoever applies to register that mark first (Article 11 of the code).
Apart from cases of unfair competition and bad faith, the code sets down four situations in which the owner of an earlier unregistered right can oppose the grant of a previously applied-for registration:
- Article 227 of the code states that a person that uses an unregistered trademark for a period of up to six months has a priority right to register the trademark and can oppose any applications for registration during that period. The user must provide proof of use during that period.
- Article 240 states that registration will be refused for trademarks which “constitute a reproduction or imitation of a certain external feature, in particular packaging or a label, including the respective form, colour and layout of wording, medals, awards and other elements, that is proven to be used by others in their registered trademarks”.
- Article 241 of the code (following Article 6bis of the Paris Convention) states that a well-known trademark can constitute grounds for refusal of a trademark application. Such well-known character must derive from brand awareness and it is for the Portuguese Industrial Property Office (PIPO) or the court to decide whether a mark is well known.
- Article 226 states that if the agent or representative of the owner of a trademark registered in an EU or World Trade Organisation (WTO) member state, but not in Portugal, applies to register that mark in its own name without the owner’s permission, the owner can oppose the application unless the agent or representative can justify the act.
Registered marks
Ownership
Article 10 of the code states that the following categories of person can legitimately obtain a Portuguese trademark or logo:
- the owner of the right, if established or domiciled in Portugal, or a person who is established or domiciled in Portugal and possesses a power of attorney for the purpose;
- the owner of the right, if established or domiciled in a foreign country, provided that it can provide either a Portuguese address or an email address or fax number;
- an official industrial property agent; and
- a duly appointed lawyer or solicitor.
All representatives (other than the owner) require a power of attorney before filing, except official industrial property agents accredited to PIPO.
Scope of protection
In Portugal, a trademark can comprise anything that can be represented graphically. Article 222 of the code states that a trademark may consist of a sign or set of signs that can be graphically represented, particularly words (including the names of persons), drawings, letters, numbers and sounds or the shape of the product or its respective packaging, provided that it adequately distinguishes the goods and services of one company from those of others. A trademark may also consist of a slogan for the respective goods or services, provided that it possesses distinctive character, regardless of the protection conferred on it by copyright.
Under Article 223 of the code, the following marks cannot be registered:
- marks that are devoid of distinctive character;
- signs that exclusively consist of a shape that:
- is imposed by the nature of the product itself;
- is necessary to obtain a technical result; or
- confers a substantial value on the product;
- signs that exclusively comprise indications that may serve in trade to designate the type, quality, quantity, purpose, value, geographic origin, period or means of production of the product or rendering of the service, or other characteristics thereof;
- trademarks that consist exclusively of signs or indications that have become customary in everyday language or in good-faith and established commercial practices; and
- colours per se, except when they are combined with each other or with graphics, words or other elements in a particular and distinctive way.
Procedures
Application
Portugal uses the first-to-file system, so registration is granted to whoever properly files the application first. The application must include, among other things, the applicant’s details, the goods or services for which the trademark is intended and the applicant’s signature or electronic identification. An application must also be accompanied by a graphical representation of the sign or, if the trademark is a sound mark, the respective musical phrases. If an application claims a certain combination of colours, the graphical representation must include the claimed colours.
After filing of the application, PIPO carries out a brief examination of the formal elements of the application. If everything is in good order, the application is published in the Industrial Property Bulletin in accordance with Article 236 of the code. Article 11(7) of the code provides that a mark can be altered at any time during the registration proceedings before a decision is issued. If it is altered, a new notice is published in the Industrial Property Bulletin and the priority of the alteration starts from the date on which it was requested.
Opposition
Following publication of the application, there is a two-month period (extendable by one month) in which any third party may file an opposition to the application (Article 17 of the code). If an opposition is filed, PIPO notifies the applicant, which has two months (extendable by one month) in which to file a reply.
Examination
Once the opposition deadlines have expired, the examiner initiates the substantive examination, which must include an analysis of:
- the absolute grounds for refusal set out in Article 223 of the code (see above);
- the relative grounds for refusal – PIPO carries out priority searches to ascertain whether third parties hold prior Portuguese, international or EU trademarks or other IP rights that prevent registration (Article 237(1) of the code); and
- any oppositions, replies and statements filed by the parties.
Registration will be provisionally refused if the examiner finds grounds for refusal. The applicant is then notified of the provisional refusal and must reply within one month (extendable by one month). If the objections to the registration are upheld, the refusal decision becomes final. If, following the applicant’s reply, the refusal is considered to be unfounded or the objections raised are resolved, the decision to grant the trademark will be issued within one month of filing the reply.
The final decision is notified immediately in accordance with Article 16(1), which requires that the notice be published in the Industrial Property Bulletin.
Challenging a decision to register
PIPO decisions can be challenged as follows.
Administrative: A request to amend the decision may be filed at PIPO within two months of publication of the decision, provided that certain conditions are met. If the alteration request is accepted, the proceedings will be referred for a higher decision.
Judicial: Within two months of publication of the decision or the administrative decision, a judicial appeal may be lodged before the specialised IP court.
Arbitral: As an alternative to a judicial appeal, the code also provides for the possibility of appealing a PIPO decision with an arbitration centre in respect of “all issues that can be judicially appealed”, provided that the other party agrees to arbitration (Articles 48 and 50 of the code).
Registration
Under Article 255 of the code, a trademark registration can last indefinitely, provided that it is renewed every 10 years. Under Article 258 of the code, the registration confers on the owner the right to prevent third parties from using an identical or similar sign without its consent in economic activities for goods or services that are identical or similar to those for which the trademark was registered and which may risk confusion or association in the mind of consumers.
Timeframes
The following timeframes apply from the date of filing to registration:
- unopposed registration – four to six months;
- opposition procedures – six to 12 months; and
- PIPO provisional refusal – eight to 10 months.
Searches
PIPO does not carry out searches for a fee. The only searches conducted are at the examination stage. Online databases are available, but are best searched by a patent and trademark attorney.
Invalidity
The grounds for invalidation are as follows:
- non-use cancellation (revocation);
- surrender;
- nullity; and
- annulment (cancellation).
Revocation (non-use cancellation): Article 37 of the Industrial Property Code provides that industrial property rights will lapse, irrespective of use, if:
- the period of validity expires – in the case of trademarks, if the registration is not renewed after 10 years; or
- the renewal fees are not paid.
Any interested party can request PIPO to revoke the trademark registration if the mark has not been put to genuine use, as defined in Article 268 of the code, for five consecutive years. Article 269(2) of the code also sets out other reasons for which revocation may be declared.
The burden of proof of use lies with the rights holder, which is notified and can reply to the revocation action within one month of notification (extendable by one month). If applicable, the rights holder 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, PIPO will decide, within one month, whether to revoke the registration. Revocation takes effect only after it has been declared in proceedings held before PIPO. Revocation is recorded and notice thereof is published in the Industrial Property Bulletin.
Surrender: Article 38 of the code provides that a rights holder can renounce its industrial property rights (or withdraw the application), provided that it expressly declares this to PIPO. Renunciation or withdrawal can be partial and carried out by the owner or by its representative. In the latter case, the representative must provide a power of attorney.
Nullity: In the case of invalidation on absolute grounds, a registration shall be deemed totally or partially null and void under Article 33 of the code 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 as set out in Article 238 of the code, excluding cases of acquired distinctiveness/secondary meaning (Articles 265 and 238(3)).
Nullity can be invoked at any time by any interested party.
Annulment: A registration can be totally or partially annulled if the owner is not entitled to it – in particular, if the right does not belong to such party or if it was granted in violation of third-party rights – or in the case of relative grounds for refusal as set out in Articles 239 to 242 of the code.
A registration cannot be annulled if the earlier trademark invoked in opposition does not satisfy the genuine use requirement set out in Article 268.
Annulment 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 (counted from the moment when it became aware of such use), the right to file an invalidity action will lapse, 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 has standing to file these actions. When the decision becomes final, the court sends PIPO a copy of the decision for publication in the Industrial Property Bulletin and for recordal in the respective file.
Enforcement
Civil proceedings
Portuguese law was amended to implement the EU IP Enforcement Directive (2004/48/EC). In regard to civil proceedings, the directive was based on the measures established by TRIPs in relation to “civil corrective measures and procedures”.
The results of transposition of the directive are clearly positive. The enforcement law has revolutionised the courts’ intervention in relation to various IP rights, particularly regarding injunction proceedings, obtaining evidence and compensation.
Border measures
Since 1986 successive EU regulations have established rules for search and seizure by Customs. The most recent amendment of the Industrial Property Code extended the scope of application of these measures to all evidence of infringement provided for in the code and provided for ex officio intervention. The rules governing customs action grant Customs broader powers of intervention in matters of IP infringement.
Criminal proceedings
Portugal has strong legislation in this area, punishing the following crimes:
- violation of exclusive rights;
- counterfeiting, imitation and illegal use of a trademark;
- sale, circulation or concealment of products or articles;
- registration obtained or maintained through abuse of rights; and
- registration of a non-existent or false act.
Administrative proceedings
The code lists the following administrative offences:
- unfair competition;
- use of unlawful trademarks; and
- invocation or undue use of private rights.
Ownership changes and rights transfers
Assignment
In accordance with Articles 31 and 262 of the code, the rights deriving from the registration of trademarks can be assigned totally or partially. An inter vivos assignment must be proven by a written document. However, if recordal of the assignment is requested by the assignor, the assignee must sign the document attesting to the assignment or submit a statement accepting the assignment. Trademark registrations may be assigned provided that such assignment does not mislead the public as to the origin of the goods or services or as to the characters necessary for it to be understood.
Recordal is necessary for the assignment to be enforceable against third parties.
Licence
In accordance with Articles 32 and 264, a trademark registration can be the subject of a full or partial licence in a particular area or in the whole of the Portuguese territory, for the full life of the right or a shorter period. The licence agreement must be drawn up in writing.
The owner of a trademark registration may invoke the rights conferred by the registration against a licensee which breaches any clause or provision of the licence agreement. In order for the licence to be enforceable against third parties, it must be recorded.
Related rights
Since the IP system is governed by the principle of freedom of constitution of a trademark, provided that they can be represented graphically and are capable of distinguishing the goods and services of one undertaking from those of others, objects of copyright or design protection or rights relating to the name and image of a person may also be protected as trademarks, provided that the abovementioned legal requirements are fulfilled.
Other forms of intellectual property may also be used to protect the overall appearance of the mark. There is thus some overlap between trademarks and other IP rights, such as designs and authors’ rights (known as ‘copyright’ elsewhere).
In regard to authors’ rights, it is possible to claim rights in the artwork of a device element included in a logo or a trademark, a three-dimensional shape or even a slogan. The relevant legislation is set out in the Code of Authors’ Rights and Neighbouring Rights.
Designs come into play in relation to device or three-dimensional marks and are protected under a separate chapter of the code. Although there may be cases where cumulative protection is possible, the two protective instruments – designs and trademarks – perform different functions and offer different scopes of protection. Furthermore, device marks that have creative character are also protected under authors’ rights law, irrespective of registration.
Online issues
Although the code does not state that trademark owners can rely on trademark rights to stop the unauthorised use of a domain name that incorporates the trademark, it is commonly accepted that the owner of a registered mark has the exclusive right to use that mark online and as a domain name.
In line with best international practices, the Portuguese regulations in respect of this matter maintain the limitations pertaining to geographical names in the ‘.pt’ domain, and rules guarantee the observance of acquired rights with a view to preventing the speculative and abusive registration of domain names in the ‘.pt’ domain, in particular prohibiting names that may give rise to error or confusion with regard to their ownership because they coincide with trademarks or other constituted rights with well-known character. Article 22 of the Regulation on the Registration of ‘.pt’ Domain Names states that a domain name cannot correspond to:
- words or expressions that are contrary to the law, public order or good practice;
- any internet top-level domain that exists or is in the process of being created;
- names that may give rise to confusion with regard to their ownership, notably because they coincide with the well-known or reputed trademarks of others;
- any internet terminologies, applications or protocols, as defined by the Internet Engineering Taskforce; or
- a geographical name, except for registrations in the ‘.com.pt’ domain and directly under ‘.pt’ pursuant to Article 11(1)(b).
The same name cannot be registered more than once in each domain level. The owner of a ‘.pt’ domain name guarantees that the registered name and its ownership do not infringe rights belonging to others.
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.
J Pereira Da Cruz, SA
Rua Victor Cordon 14
Lisbon 1249-103
Portugal
Tel +351 21 347 5020
Fax +351 21 342 1885
Web www.jpcruz.pt
Maria Cruz Garcia
J Pereira Da Cruz, SA